Could've. Should've? In Trademark Law - Just Because You Can - Should You?

Trademark law is unique. Unlike other intellectual property regimes where the primary concern is protecting the rights holder, trademark law is all about protecting the consumer and maintaining the integrity of the communication exchange between producer and consumer. (That’s why the test for infringement is “likelihood of confusion.”) Unlike patent or copyright laws, which simply create a bundle of rights to protect, trademark rights are fluid and the rights you have depend on the right a consumer has to rely on your mark as the source or origin of your goods or services. 

Because we’re involved in branding and trademarks, we (attorneys and mark holders) have a vested interest in maintaining the integrity of the information exchange. Trademark law provides a broad sword to carve out the egregious offenses between competitors (such as where a competitor passes its goods or services off as the trademark holders), but sometimes the biggest offenses are perpetrated by the mark holders themselves. Steve had a great post on Monday about mark holders “verbing up” their marks. Some mark holders make a habit of using their marks in a generic sense as the name of the good, which could have disastrous consequences down the road.

Then, there are the more subtle malfeasances; the employment of branding and advertising strategies that, while failing to run afoul of applicable legal concepts, nonetheless damage the integrity of the communication exchange between consumer and producer.   As lawyers, we’re frequently asked by clients whether they can do certain advertising. However, the corollary question that often needs to be asked is, regardless of whether you can, should you? 

The answer to the "should you" question is, of course, something about which reasonable minds can disagree.  But, I see at least two advertising strategies which you can do, but I don’t think you should do (personal opinion only). The first of these is the overuse of superlatives: Good, Better, Best, Greatest, America’s Finest, Number One (and on and on and on). While the use of such words is legally okay (it's considered non-actionable “puffing”), I disagree with their efficacy as a branding strategy.  As a consumer, I always feel that talk is cheap (apologies for that hyperlink), and a resort to words like this is an admission that you don’t have anything more interesting to say about your product. (That’s not to say that some companies, like beer companies, can’t do great things with superlatives – see here (radio spot) and here.)

Another thing that I see is advertisers depicting a product in a way that, while technically accurate, does not give the consumer the most accurate information. Movie previews are my favorite example of this malfeasance. How often does it happen that you see a preview and go to a movie expecting to see a kick-ass action movie, only to find out the primary plot line is some tired romance story (I’m looking at you Top Gun). The entire experience makes me feel duped and less likely to trust that particular director/studio/producer in the future. Any preview can make any movie look like something that it's not, and assuming the preview contains actual movie clips, there’s probably nothing legally wrong with it. The question, though, is how will the customer feel when comparing the preview to the product? To me, the additional interest you may generate by putting together a flashy, but misleading preview, simply isn’t worth alienating customers when they realize what they bought wasn't precisely what was advertised.  I think this example can carry over to product branding as well.  Credibility matters.

 This entry is reposted from Winthrop & Weinstines's Duets Blog located at:  www.duetsblog.com