Articles

Trademark Fair Use

By Baila Celedonia

Jun. 18, 2004

On December 8, 2004, the U.S. Supreme Court decided that courts need not make a separate determination of likelihood of confusion when faced with a trademark statutory fair use defense. KP Permanent Make-Up, Inc. v. Lasting Impression, Inc., No. 03-409, 2004 U.S. Lexis 8170 (December 8, 2004). This decision resolved a split between those Courts of Appeals that held that a likelihood of confusion bars a statutory fair use defense (this group included the 5th, 6th and 9th Circuits) and those that recognized a statutory fair use defense despite a likelihood of confusion (this group included the 2nd, 4th and 7th Circuits). The Court's decision is discussed in greater detail in the update of this article. Click here for the update.

Statutory Fair Use
Nominative Use as Fair Use
Comparative Advertising as Fair Use
Parody as Fair Use
Conclusion
Notes

The concept of fair use in copyright law is well known to intellectual property practitioners. An analogous concept exists in trademark law, where the use of another's mark is deemed 'fair'. As in copyright law, the public benefit of allowing the use is perceived to override any alleged detriment to the trademark owner, and is thus deemed to be a fair use.

The Lanham Act contains a statutory fair use provision, § 33(b)(4), 17 U.S.C. § 1115(b)(4). However, because of the narrow scope of the statutory provision, three additional, judge-made categories have arisen in which use of another's trademark may be considered non-infringing. These are: (1) nominative 'fair use'; (2) comparative advertising as 'fair use' and (3) parody as 'fair use'.

 

I.  STATUTORY FAIR USE

Pursuant to § 33(b)(4) of the Lanham Act, a defense to a claim of trademark infringement exists where:

(4) the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark . . . of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin. . . .

17 U.S.C. § 1115(b)(4)(emphasis added).¹

While this 'fair use' defense is specified as a defense to the incontestability of a mark and the exclusive right to use the mark by the registrant, it has regularly been used as a defense to § 43(a) infringement claims as well.²

In general terms, the statutory 'fair use' defense prevents a trademark owner from monopolizing, or appropriating a descriptive word or phrase. In a leading case on this defense, Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983), the court noted that

The defense is available only in actions involving descriptive terms and only when the term is used in its descriptive sense rather than its trademark sense.

698 F.2d at 791 (citing Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1185 (5th Cir. 1980).

The purpose of the statutory fair use defense is to allow non-owners of the trademark to accurately describing their goods. Therefore, the defense is only available when the mark at issue is descriptive, and then, only where the descriptive term is used descriptively. Because the use is 'otherwise than as a mark,' the 'fair use' of someone else's descriptive trademark should not be likely to cause confusion.

[A]nyone is free to use the term in its primary, descriptive sense so long as such use does not lead to customer confusion as to the source of the goods or services.

Zatarains, 698 F.2d at 791 (citing 1 J. T. MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION § 11.17 at 379 (1973)).

In Zatarains, the plaintiff, inter alia, had a federal trademark registration for the mark FISH-FRI for a corn flour product used to batter fish for frying purposes. The district court found that while the mark was descriptive, it had acquired the necessary secondary meaning. However, under the circumstances, the defendant's use was deemed a fair use of the term under the statute.

In affirming, the Fifth Circuit highlighted the defendant's good faith, in that it had not used the term in a trademark sense, and had never attempted to register the words as a trademark. Of particular importance to the court was that defendant had consciously packaged their goods in such a way that any potential confusion was minimized.

The dissimilar trade dress of these products prompted the district court to observe that confusion at the point of purchase—the grocery shelves—would be virtually impossible.

698 F.2d at 796.

In sharp contrast to successful use of the statutory fair use defense in Zatarains is Sands, Taylor & Wood Co. v. Quaker Oats Co.,978 F.2d 947 (7th Cir. 1992), the THIRST AID case. In Sands, the owner of several incontestible registrations for the mark THIRST AID for a variety of beverage products and syrups, sued Quaker Oats for its use of the phrase 'Gatorade Is Thirst Aid for that Deep Down Body Thirst' in advertising and promotion.³

The Seventh Circuit agreed with Quaker Oats that 'thirst aid' was descriptive for the purposes of §33(b)(4). I would note that the line between descriptive and suggestive marks probably rests in a different place when judging the § 33(b)(4) defense than when attempting to register a mark on the Principal Register. In any event, the issue in a statutory fair use case is not whether the plaintiff's mark is descriptive of plaintiff's product, but whether the term is used descriptively in relation to the defendant's product. Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055, 1058 (7th Cir. 1995).

While Quaker Oat's use of the term 'thirst aid' was descriptive, it did not pass the remainder of the statutory test. The court rejected the argument that THIRST AID was not used as a trademark because it was always used in conjunction with the famous GATORADE mark. Rather the court found that Quaker Oats used THIRST AID as an 'attention getting symbol,' which often appeared more prominently and in larger type than the obvious trademark GATORADE.⁴ The Sands court cited Louis Rich, Inc. v. Horace W. Longacre, Inc., 423 F. Supp. 1327 (E.D. Pa. 1976), for the proposition that 'use meant to foster identification with defendant and its product is not a fair use.' 798 F.2d at 954.

However, just because the term in issue is used prominently in advertising, does not mean that the use would not be a fair one. The Seventh Circuit found the use of the term 'sweet-tart' in advertising and promotion for Ocean Spray cranberry juice drinks to be descriptive of such juices, which are both sweet (they have added sugar) and tart (they have cranberries). The use in the ads was thus a fair use, and did not infringe the mark SweeTARTS for candy. Sunmark, Inc. v. Ocean Spray Cranberries, Inc., 64 F.3d 1055 (7th Cir. 1995).

Fair use was also found in Wonder Labs Inc. v. Proctor & Gamble Co., 728 F. Supp. 1058 (S.D.N.Y. 1990), involving the term DENTIST'S CHOICE for toothbrushes. There, the court held that even though the term was prominently displayed in the defendant's advertisements, simply drawing attention to the phrase was not enough—attention had to be drawn to the words as a source of product.

Another key statutory fair use case, WCVB-TV v. Boston Athletic Association, 926 F.2d 42 (1st Cir. 1991), involved the use of the registered trademark BOSTON MARATHON by a television station in connection with its coverage of the event. This case highlights the importance of context in a fair use determination.

Without allowing others to use the term BOSTON MARATHON, it would be virtually impossible to describe the Boston Marathon—one could hardly call it 'the 26 point 2 mile race run in Boston once a year.'

The First Circuit found that the fair use defense was properly asserted, reasoning that the trademark was used primarily in a descriptive manner. Because of the 'timing, meaning, context, intent, and surrounding circumstances,' there was no likelihood of confusion.

[T]he words 'Boston Marathon' . . . do more than call attention to Channel 5's program; they also describe the event that Channel 5 will broadcast. Common sense suggests (consistent with the record here) that a viewer who sees those words flash upon the screen will believe simply that Channel 5 will show, or is showing, or has shown, the marathon, not that Channel 5 has some special approval from the [trademark holder] to do so. In technical trademark jargon, the use of words for descriptive purposes is called a 'fair use,' and the law usually permits it even if the words themselves also constitute a trademark.

926 F.2d at 46.

 

II.  NOMINATIVE USE AS FAIR USE

The WCVB-TV case serves as a perfect segue into the next fair use defense, nominative fair use. Unlike most statutory fair use case, nominative fair use involves the descriptive use of another's mark to describe or identify the plaintiff's goods or services, not the defendants.

In 1992, the Court of Appeals for the Ninth Circuit articulated this new defense to trademark infringement. In New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992), the Ninth Circuit, in a typically articulate opinion by Judge Kozinski, described those circumstances in which the use of another's trademark is allowed, even when not directly covered by the statutory fair use defense of the Lanham Act:

[W]here the defendant uses a trademark to describe the plaintiff's product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.

Id. at 308.

New Kids involves a balancing of the plaintiffs' rights in the name of their rock group, and the rights of the defendants to use that name to identify the group as the subjects of public opinion polls. The defendants were two newspapers which separately operated '900' phone numbers which callers used to respond to questions which had been posed in their respective newspapers. The newspaper advertisements each contained a picture of the 'New Kids on the Block' and posed various questions about which 'New Kid' was the favorite.

The New Kids on the Block filed suit and alleged trademark infringement by the newspapers for using the New Kids trademark in association with the advertisements. The district court had granted summary judgement to the newspapers on First Amendment grounds. On appeal, however, the Ninth Circuit chose not to reach the constitutional issue, but could not use the statutory fair use defense because NEW KIDS ON THE BLOCK is not a descriptive term, but rather an arbitrary mark for a singing group.

Much as the statutory fair use defense of the Lanham Act is aimed at protecting a competitor's ability to simply describe its product, the purpose of the nominative fair use defense is to allow a third party fairly to describe another's product.⁵ According to Judge Kozinski, if a law suit resulted every time someone's trademark was referred to, then a valuable social and commercial means of communication would be lost.

Such nominative use of a mark—where the only word reasonably available to describe a particular thing is pressed into service—lies outside the strictures of trademark law: Because it does not implicate the source-identification function that is the purpose of trademark, it does not constitute unfair competition; such use is fair because it does not imply sponsorship or endorsement by the trademark holder.

Id. at 308.

The New Kids opinion acknowledges that the 'classic fair use case where the defendant has used the plaintiff's mark to describe the defendant's own product' was not applicable. Id. However, the opinion cites several other factually similar cases in which no infringement was found. In addition to WCVB-TV, discussed above, the Ninth Circuit cited Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969) (automobile repair shop could use VOLKSWAGEN mark to communicate the kind of cars it repairs provided that defendant did not suggest authorization or sponsorship); and Universal City Studio, Inc. v. Ideal Publishing Corp., 195 U.S.P.Q. 761 (S.D.N.Y. 1977) (magazine could use television program's trademark HARDY BOYS in association with a photograph of the show's stars).

Cases like these are best understood as involving a non-trademark use of a mark—a use to which the infringement laws simply do not apply, just as videotaping television shows for private home use does not implicate the copyright holder's exclusive right to reproduction.

971 F.2d at 307.

By formulating a 'nominative use' defense to trademark infringement claims, the court consolidated the rationales of the previous cases dealing with similar situations, and outlined the factors important in determining the merits of the defense. However, since the Ninth Circuit's decision in New Kids, the nominative fair use defense has been used sparingly by the courts.

In National Football League Prop. v. Playoff Corp., 808 F. Supp. 1288, 1293 (N.D. Tex. 1992), which dealt with the use of NFL trademarks appearing on the uniforms of players pictured on trading cards, the district court acknowledged that the statutory fair use defense was unavailable because the trademarks in issue were arbitrary or fanciful. However, it declined to adopt the Ninth Circuit's rationale in New Kids, holding that it was up to the Fifth Circuit Court of Appeals to adopt such a rationale and not the district court.⁶

The Ninth Circuit recently revisited its nominative fair use defense in Kareem Abdul-Jabbar v. General Motors Corp., 85 F.3d 407 (9th Cir. 1996). GMC had produced a television commercial which asked the question: 'Who holds the record for being voted the most outstanding player of [the NCAA] tournament?' and answered: 'Lew Alcindor, UCLA, '67, '68, '69.' The commercial continued by stating that the Oldsmobile Eighty-Eight won an 'award' three years in a row, and like the star, the car is a 'champ' and a 'first round pick'.

The Ninth Circuit accepted the district court's determination that the defendant, GMC, met the first two prongs of the nominative use test; that Lew Alcindor could not be referenced without using his name, and that GMC used the name only to the extent necessary to identify him. The Ninth Circuit reversed the district court's grant of summary judgement, however, because celebrity endorsements have become an established means of doing business. Therefore, a jury could reasonably find that the use of Lew Alcindor's name in the commercial implied endorsement.

The key, therefore, to a successful nominative use defense appears to be that the use is such that no endorsement or other sponsorship is implied.

Had GMC limited itself to the 'trivia' portion of its ad, GMC could likely defend the reference to Lew Alcindor as a nominative fair use. But by using Alcindor's record to make a claim for its car—like the basketball star, the Olds 88 won an 'award' three years in a row, and like the star, the car is a 'champ' and a 'first round pick'—GMC has arguably attempted to 'appropriate the cachet of one product for another,' if not also to capitalize on consumer confusion.

85 F. 3d at 413 (citing New Kids at 308).

 

III.  COMPARATIVE ADVERTISING AS FAIR USE

As in the nominative use defense discussed above, comparative advertising involves a situation where the trademark of a competitor is used to refer to the competitor's goods. Because comparative advertising is generally an obvious comparison of competing products (for example, '8 out of 10 doctors surveyed prefer Acme creme to Widget creme'), there is little likelihood of confusion as to the source of the ad.⁷

Because there would be no likelihood of confusion, comparative advertising, in and of itself, is generally not actionable. However, when such advertising is false, or results in the disparagement, dilution or tarnishment of another's trademark, it is actionable. Such causes of action are beyond the scope of this paper. However, a brief discussion of satirical comparative advertising cases is warranted, because of their relationship to the parody defense.

Wendy's International, Inc. v. Big Bite, Inc., 576 F. Supp. 816 (S.D. Ohio 1983), was a § 43(a) action in what was labelled the 'burger wars'. Big Bite, a small competitor trying to compete with the national chains, ran 'rather clever' television commercials which parodied some of the larger chains. In one, 'Little Wendy', a pigtailed, frecklefaced young girl and Wendy's trademark, orders a Big Bite sandwich and exclaims, 'Ain't no reason to go any place but Big Bite.'⁸ The 'Little Wendy' character was mimicked almost exactly by Big Bite. Wendy's alleged that the commercial violated § 43(a) of the Lanham Act because it insinuated that 'Little Wendy' (and therefore Wendy's International, Inc.) endorsed, or was otherwise associated with, Big Bite.

Although it is fairly well established that an advertiser such as Big Bite may lawfully use a competitor's trademark for the purpose of comparing its wares directly to those of the competitor, no uniform rule exists where, as here, the advertiser compares his goods to those of another implicitly or indirectly by using the other's mark in a satirical or humorous manner. In fact, the courts facing this issue have reached widely different results for widely different reasons.

576 F. Supp. at 820 (citations omitted).

The court found the commercials to be inoffensive, entertaining and light-hearted spoofs which did not misrepresent or make false statements about the competing products. However, the court grudgingly issued a preliminary injunction, because Wendy's had met its burden of 'showing that the disputed advertisement 'tend[s] to create a false impression.'' Id. at 822. Given Big Bite's motives, 'a strong inference of probable confusion arises, and all doubts are resolved against the defendant.' Id. As discussed in the last section of this paper, a different result would likely have occurred if Big Bite was not a competitor.

Similar fair use issues arise in the dilution context. In Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. 1994), MTD ran a commercial which, instead of simply using the famous trademark of Deere and Company, a two-dimensional silhouette of a leaping male deer in profile, it used an altered form of the trademark. The deer in the MTD commercials was animated and hopped around the television screen, pursued by a YARD-MAN lawn tractor and a barking dog.

Deere's trademark infringement claim was rejected, but it succeeded on its dilution claim. The Second Circuit found that the alteration of the Deere logo constituted dilution. However, the court stressed that not all alterations of another's trademark would constituted dilution:

Whether the use of the mark is to identify a competing product in an informative comparative ad, to make a comment, or to spoof the mark to enliven the advertisement for a noncompeting or a competing product, the scope of protection under a dilution statute must take into account the degree to which the mark is altered and the nature of the alteration. Not every alteration will constitute dilution, and more leeway for alterations is appropriate in the context of satiric expression and humorous ads for noncompeting products. But some alterations have the potential to so lessen the selling power of a distinctive mark that they are appropriately proscribed by a dilution statute. Dilution of this sort is more likely to be found when the alterations are made by a competitor with both an incentive to diminish the favorable attributes of the mark and an ample opportunity to promote its products in ways that made no significant alteration.

41 F.3d at 45. Because the parties had competing products, the Court found the satire to be unfair.

 

IV.  PARODY AS FAIR USE

'Parody is a humorous form of social commentary and literary criticism that dates back as far as Greek antiquity.'⁹ Because trademarks have become an all-pervasive element in our society, it is not surprising that they have also become a legitimate target of satirists and comedians, who seek to comment on or poke fun at this aspect of our national culture.

As the Supreme Court noted in a copyright context, parody is an important form of artistic expression generally protected by the First Amendment. Acuff-Rose Music, Inc. v. Campbell, 510 U.S. 569 (1994). However, as in copyright, a mere assertion that the complained of use is a parody, will not mean that the use is automatically fair and non-infringing. As the Wendy's Int'l and Deere & Co. cases discussed earlier illustrate, ultimately, the court must determine if there is a likelihood of confusion or dilution, while keeping in mind the value of parody in a free society. Therefore, when the parody defense to a trademark infringement or dilution claim is made, judicial reasoning often involves a mixed bag of traditional trademark and dilution analysis and free speech policy.

A review of trademark parody cases give us no bright line rules. Rather, they appear to be a barometer of both the presiding judge's sense of humor and sense of fairness. As Tom McCarthy puts it, 'a non-infringing parody is merely amusing, not confusing. J.T. MCCARTHY, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION, § 31.38[1] (1995).

What seems evident is that almost no courts find a parody which associates a trademark with illegal drugs¹⁰ or raw pornography¹¹ funny or fair. Even when a dilution theory is either not available or not raised, because the harm to plaintiff caused by such negative association is so evident, any first amendment concerns are overridden, and the court will seek to find actionable 'confusion'. In enjoining the pornographic film 'Debbie Does Dallas,' the Second Circuit noted:

[i]t is hard to believe that anyone who had ever seen defendants' sexually depraved film could thereafter disassociate it from plaintiff's cheerleaders. . . .

This association results in confusion which has a tendency to impugn [plaintiff's services] and injure plaintiff's business reputation.

604 F.2d at 206.

Based on the same concerns for a company's reputation, courts have also stretched to find trademark confusion if the parody disparages the plaintiff's trademark. This can be the only rationale for the contrary results in Chemical Corp. of America v. Anheuser-Busch, Inc., 305 F.2d 433 (5th Cir. 1962) (finding a likelihood of confusion caused by the use of the slogan 'where there's life . . . there's bugs' for a floor wax insecticide product) and Anheuser-Busch, Inc. v. Florist Ass'n of Greater Cleveland, 603 F. Supp. 35 (N.D. Ohio 1984) (finding no confusion caused by a floral association's use of the slogan 'This bud's for you'). Of course, the stretching to find 'confusion' will no longer be necessary in light of the new federal dilution statute.¹² Under a dilution theory, close cases may now be decided in favor of the plaintiff.

The most inconsistent group of cases involve parodies which are done, generally by non-competitors, and which are not (at least in the court's opinion) particularly disparaging or obscene. Examples of this inconsistency include Eveready Battery Co. v. Adolph Coors Co., 765 F. Supp. 440 (N.D. Ill. 1991) (refused to enjoin, on copyright, trademark or dilution grounds, a beer commercial which parodied the 'Energizer Bunny' and featured Leslie Nielsen dressed in Bunny ears, tail and feet, and banging on a drum); Gucchi Shops, Inc. v. R.H. Macy and Co., 446 F. Supp. 838 (S.D.N.Y. 1977) (enjoined a use of the words 'Gucchi Goo' together with a red and green stripe on a diaper bag); Girl Scouts of America v. Personality Posters Mfg. Co., 304 F. Supp 1228 (S.D.N.Y. 1969) (refused to enjoin a poster of an obviously pregnant young teen in a Girl Scout uniform beneath the slogan 'be prepared'); American Express Co. v. Vibra Approved Labs. Corp., 10 U.S.P.Q.2d 2006 (S.D.N.Y. 1989) (based on dilution, enjoined defendant's 'America Express' condom card containing a condom and the slogan 'never leave home without it'); Jordache Enters. Inc. v. Hogg Wyld, Ltd., 825 F. 2d 1482 (10th Cir. 1987) (refused to enjoin the use of the trademark LARDASHE with a pig design for large-sized women's jeans); Mutual of Omaha Insurance Co. v. Novak, 836 F. 2d 397 (8th Cir. 1987) (enjoined the use of the words 'Mutant of Omaha' and Indian Head logo on tee shirts, mugs, etc.).

Court's are more likely to find a parody to be a fair use, that is, non-infringing or diluting, if the parody appears in a traditional medium of protected free speech, finding such use to be 'noncommercial'. For example, the First Circuit reversed the district court's finding of dilution against High Society magazine's 2-page feature 'L.L. Beam's Back to School Sex Catalog,' depicting models in sexually explicit positions, holding that the article was protected as a noncommercial, editorial or artistic parody.

It offends the Constitution . . . to invoke the anti-dilution statute as a basis for enjoining the noncommercial use of a trademark by a defendant engaged in a protected form of expression.

L.L. Bean, Inc., 811 F.2d at 32.

In support of its conclusion that the defendant's use was noncommercial (and therefore entitled to a more heighten level of protection than would be afforded to commercial speech), the First Circuit pointed to use of the labels 'parody' and 'humor' in the magazine's table of contents; that the L.L. Bean mark and the article were not mentioned on the magazine's front or back cover; that the article took up only two pages of a hundred page issue; and that the defendant was not selling any of the products shown in the article.

Another example of the broader scope allowed trademark parody in a noncommercial context is Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Corp., 886 F.2d. 490 (2d Cir. 1989), which involved the use by the publisher of Spy Magazine of the cover design elements of Cliffs Notes for tongue-in-cheek parody called 'Spy Notes.' Reversing the district courts injunction based on a likelihood of confusion, the Court stated that a greater risk of confusion must be allowed for works such as parodies, in which expression, and not commercial exploitation, is the primary intent. Id. at 497.

The value of free speech was also acknowledged by the court in Mutual of Omaha, normally cited for the proposition that a disparaging parody of a company's trademark ('Mutant of Omaha') on a commercial product such as tee-shirts should be enjoined. The same court noted that the parody could be used, for example, on anti-nuclear pamphlets, a traditional means of free-speech. 836 F.2d at 403 n. 8.

 

Conclusion

What can be learned from this review of trademark fair use cases, beyond the conclusion that consistency is the hobgoblin of small minds? I believe it is that most judges are attempting to be fair: to balance the valuable property rights of the trademark proprietor with a third party's right to fairly describe its own products or to accurately identify the plaintiff's products; to balance the valuable property rights of the trademark proprietor with the public's interest in accurate product comparisons or the value of social criticism in the form of parody in a free society. The question is—is it fair? Sometimes the answer is obvious. But ofttimes, reasonable and fair minded people (and courts) can and do differ.

NOTES

¹ This provision also applies to the use of a defendant's own name.

²

§ 33(b) statutory defenses [such as fair use] are not, strictly speaking, defenses on the merits. Rather, they only affect the weight of the presumption of validity accorded an 'incontestably' registered mark. Hence, they are not directly relevant to § 43(a) infringement cases. Yet, if some of the statutory 'defenses' are viewed merely as conveniently accessible 'restatements' of common law defenses to the assertion of an unregistered mark, as has been the case, then they are properly used. The caveat is that the statutory 'defenses' in a § 43(a) case are merely guidelines to ascertain the federal common law substantive 'defenses' to a § 43(a) claim.

J. T. MCCARTHY, TRADEMARKS AND UNFAIR COMPETITION, § 27.03[2][b] (3d ed. 1992).

³ The legal department at Quaker Oats had determined that this advertising and promotional use of the term 'Thirst Aid' did not raise a trademark issue because it was merely a descriptive use. In addition, a trademark investigation had lead Quaker Oats to believe that plaintiff was no longer marketing any beverages under the THIRST AID mark.

⁴ The association between GATORADE and THIRST AID was also increased because of the rhyming quality of the two terms, which made the slogan more memorable.

⁵ Judge Kozinski stressed the need of persons and business to be able to adequately identify a product. He imagined some situations which epitomized his concern:

For example, one might refer to 'the two-time world champions' or 'the professional basket ball team from Chicago,' but it's far simpler (and more likely to be understood) to refer to the Chicago Bulls.

*  *  *

Indeed, it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the mark. For example, reference to a large automobile manufacturer based in Michigan would not differentiate among the Big Three; reference to a large Japanese manufacturer of home electronics would narrow the field to a dozen or more companies.

Id. at 306-307.

⁶ See also, Chrysler Corp. v. Newfield Publishing Corp., 880 F. Supp. 504 (E.D. Mich. 1995).

⁷ Beware! In a number of countries outside the United States, comparative advertising is considered a trademark infringement or unfair competition, even if the comparison is accurate.

⁸ 'Ain't no reason to go anyplace else' was a registered mark of Wendy's.

⁹ L.L. Bean, Inc. v. Drake Publ. Inc., 811 F.2d 26, 28 (1st Cir.), cert. denied, 483 U.S. 1013 (1987).

¹⁰ See, e.g., Coca Cola Co. v. Gemini Rising, Inc., 346 F. Supp. 1183 (E.D.N.Y. 1972). (enjoining the use of poster featuring slogan 'Enjoy Cocaine' in the distinctive Coca Cola scrip).

¹¹ See, e.g., Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir. 1979) (porno film 'Debbie Does Dallas', in which star appears clad—albeit partially—in what appears to be a Dallas Cowboys Cheerleaders uniform); Pillsbury Co. v. Milky Way Prods., 215 U.S.P.Q. 124 (N.D. Ga. 1981) (found for plaintiff based on dilution; Pillsbury's 'Poppin Fresh' and 'Poppy Fresh' in lewd, 'lovin' from the oven' poses in Screw Magazine). But see L.L. Bean discussed below.

¹² The Floral Ass'n court had specifically noted that Ohio had no dilution statute.

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