Comparing Your Product to Recognized Brands
R.J. Reynolds recently filed a federal lawsuit accusing an e-cigarette merchant of trademark infringement. R.J. Reynolds accused the company of unfair competition and dilution under the Lanham Act based on the company’s alleged use of the Camel and Winston cigarette brand names to describe the company’s e-cigarettes. R.J. Reynolds claimed that the competitor advertised “Winston” and “Camell” flavors on its website.
Setting aside whether the company infringed R.J. Reynolds’ trademarks, the fair use doctrine may provide a defense to the use of another party’s trademark so long as the use of another’s trademark does not create a likelihood of confusion for potential consumers. There are two types of fair use: descriptive fair use, which is when the defendant uses the plaintiff’s mark to describe the defendant’s mark, and nominative fair use, which is when the defendant uses the plaintiff’s mark to describe the plaintiff’s mark.
The law sets forth a number of activities that are not actionable because they constitute fair use. Fair use under the law includes both descriptive fair use and nominative fair use. To constitute fair use under, the famous mark cannot be used as a designation of source for the person’s own goods. Use of a famous mark for comparative advertising may constitute fair use.
Generally, there is no infringement when an advertiser uses another company’s trademark to identify the other company’s product to provide a comparison between the products. For example, the company could have provided a comparison by providing “tastes like Camel” or “tastes like Winston” on its website. Also, the company could have included a picture of R.J. Reynolds’ product to identify R.J. Reynolds, not the company, as the source of the product. It would be difficult to prove that confusion is likely if the company distinguished between its product and R.J Reynolds’ product as well as clearly linking R.J. Reynolds to R.J. Reynolds’ mark.