Ecommerce websites often sell generic versions of a manufacturer’s product. These might be replacement parts, compatible parts, or another product that works with the manufacturer’s brand name product.
Obviously, manufacturers will make more money if consumers buy directly from the manufacturer rather than some online generic or compatible version. So manufacturers often threaten, through their lawyer, that an online retailer must “cease and desist” use of the manufacturer’s trademarked brand name, claiming that the online retailer is infringing the manufacturer’s registered trademark.
Fortunately, trademark law protects online ecommerce retailers and others who seek to advertise that their products are compatible with a trademarked brand name product.
How to Use a Manufacturer’s Trademarked Brand without Infringement
The legal question is whether retail stores, which may be online ecommerce websites or brick-and-mortar stores that sell replacement, compatible, or comparable parts, may use the manufacturer’s trademarked brand name in their advertisements and/or product descriptions.
In short, retail sellers of generic parts may use the trademarked brand name, but such use should be the “minimum necessary” to identify to consumers that the product is compatible with or comparable to the brand name product. The retailer must also pass the following four tests:
- the online retailer directly differentiates its product from the trademark owner’s
- the online retailer is well known as being an entity separate from the trademark owner
- the online retailer’s products themselves bear the online retailer’s trade name or trademark, and
- the online retailer sufficiently attributes ownership of the trademark at issue to the trademark owner
In a number of cases, court’s have found that that consumers were confused about the relationship between a manufacturer and retailer, so there was trademark infringement. Examples of consumer confusion include:
- the retailer’s trade dress closely emulated that of the trademark owner’s
- the retailer failed to attribute the trademark associated with the original product as belong to the trademark owner
- the retailer used the trademark owner’s trademark on the replacement product itself
In summary, online retailers need to make sure that consumers are not led to believe that there is an association between the online retailer’s website and the manufacturer.
Use a Manufacturer’s Trademarked Brand in Meta Tags for SEO
Online etailers may wonder how this affects use in meta tags, which are used for search engine optimization. This probably means you may use the trademarked brand name in a title tag once, in the description tag once, and in the text of the page once, but no more. Further, the other content on the web page should fulfill the requirements of the 4 part test above.
Court Cases Dealing with Advertising & Use of Manufacturer’s Trademarked Brand
There is virtually no disagreement among the courts that a seller of replacement parts or accessories intended to work with another seller’s products may make certain parts or accessories are intended for use with the original equipments. See J. Thomas McCarthy, 4 McCarthy on Trademarks (symbol) 25:51 (4th ed.). The primary issue becomes whether the specific use the seller of the replacement or accessory part reaches too far and creates confusion as to the source of the replacement or accessory part reaches too far and creates confusion as to the source of the replacement or accessory parts. Id. If the seller reaches too far and creates such confusion, or a likelihood of such confusion, the seller’s use is trademark infringement. Id.
The most cited case in this area is Elecs. Corp. of Am. V. Honeywell, Inc., 428 F.2d 191 (1st Cir. 1970). In Honeywell, the defendant sold a controller meant to replace an individual part of the plaintiff’s industrial safety system that wore out over time and required replacement. Id. at 192-93. The defendant used the trademark describing the plaintiff’s system in is marketing materials. Id. at 193. The First Circuit found that this was a permissible use of the plaintiff’s trademark and that it was necessary to tolerate some slight danger of confusion in the area of replacement parts. Id. at 193-94. It should be noted, however, that the Court included in its analysis that the defendant, Honeywell, was a widely-known company that could not be confused as being associated with the plaintiff. Id. at 193. The Court also noted that the advertising and product packaging associated with the defendant’s replacement conspicuously noted that the defendant’s product was competing with and different from plaintiff’s own replacement controllers. Id. In view of all these facts, the First Circuit found that the defendant’s use of the plaintiff’s trademark was not improper.
Unsurprisingly, the cases following Honeywell and addressing the issue of how far a seller of replacement parts can go before their acts constitute trademark infringement differ somewhat in their conclusions.
The only use of another’s trademark that likely no court would find improper would be the use of that trademark descriptively accompanied by a conspicuous disclaimer that the seller of the replacement part is not associated with the seller of the original equipment. There is strong consensus that the descriptive use of a trademark in explaining the purpose for a replacement part, i.e. “Replacement Battery for Dell Model XXXXX.” See Waco Int’l, Inc. v. KHK Scaffolding Houston, Inc., 278 F.3d 523 (5th Circ. 2002) (permitting defendant to refer to its scaffolding as “Waco-style” to describe its own product); Hypertherm, Inc. v. Precision Prods. Inc., 832 F.2d 697, 700 (1st Cir. 1987) (affirming preliminary injunction but noting that defendant can use plaintiff’s trademark to describe its own product); Bijur Lubricating Corp. v. Devco Corp., 332 F. Supp. 722, 730 (D.N.J. 2004) (defendant can use plaintiff’s trademarks in by noting that its products “replace Bijur parts”); Lasermaster Corp. v. Sentinal Imaging, 931 F. Supp. 628, 635 (D. Minn. 1996) (permitting defendant to describe its products as compatible with plaintiff’s printing system). Nonetheless, even when potential infringers use the mark describing the original equipment descriptively, at least on court has held that the defendant must still attribute marks that are not its own as belong to others. Novo Nordisk of N. Am. Inc. v. Eli Lilly and Co., No. 96 Civ. 5787, 1996 U.S. Dist. LEXIS 12807, at *36 (S.D.N.Y. Aug. 30, 1996) (requiring defendant to note conspicuously on its packaging that it is not associated with plaintiff and to attribute ownership of plaintiff’s trademark to plaintiff even though defendant used the trademark to describe its product).
In those cases where the courts have found that a defendant’s use constitutes trademark infringement, the courts have found confusion where: (1) the defendant’s trade dress closely emulates that of the plaintiff, Hyperterm, 832 F.2d at 699; (2) the defendant fails to attribute the trademark associated with the original product as belong to the plaintiff, Novo Nordisk, 1996 U.S. Dist. LEXIS 12807, at *36; and (3) the defendant uses the plaintiff’s trademark on the replacement product itself, Ford Motor Co. v. Lloyd Design Corp., 184 F. Supp. 2d 665-75 (E.D. Mich. 2002).
In those cases where courts have found that a defendant’s use does not constitute trademark infringement, the courts have pointed out that the following facts favor defendants; (1) the defendant directly differentiates its product from the plaintiff’s, Honeywell, 428 F.2d at 193; Lasermaster, 931 F. Supp. at 635; (2) the defendants is well known as being an entity separate from the plaintiff, Honeywell, 428 F.2d at 193; Mueller Co. v. U.S. Pipe & Foundry Co., 351 F. Supp. 2d 1, 3 (D.N.H. 2005); (3) the defendant’s products themselves bear the defendant’s trade name, Waco, 278 F.3d at 526; Mueller, 351 F. Supp. 2d at 3; and (4) the defendant sufficiently attributes ownership of the trademark at issue to the plaintiff; Novo Nordisk, 1996 U.S. Dist. LEXIS 12807, at *9.