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[mia077]

The basic question I have is if trademark infringement can occur in advertising where the ad promotes a company in a similar field as the trademark owner? 

I have a situation where a suggestive word is being used in an advertising campaign and that word also happens to be a service mark owned by another company.  I think there is a risk of infringement because the word is the dominate feature in the ad and the ad is promoting a company that provides services in the same class as the service mark. I'm getting  resistance from the marketing department who would like to go ahead and run the campaign.   

It is not a comparison of a competitor's product, thus I believe the likelihood of confusion analysis would apply?

Thanks for your thoughts.

[mactheknife]

Short answer, yes, trademark infringement can occur in that situation.  It sounds like you're not an in-house lawyer for the company?  If you're not, go talk to one and bring up your concerns.  If you are, then you'll know that marketers hate lawyers because it always seems like they're telling them not to do things.  What you can do is tell them what is likely to happen if they do go forward: the company will have thrown $x million down the drain in executing the creative campaign because a judge will likely enjoin you from running it, and the company will also be liable for the competitor's lost profits, the company's own "ill-gotten" profits, and at least its attorneys' fees (and perhaps the other side's as well, depending on the egregiousness of the conduct).  Putting the risk in dollars and cents is more likely to get their attention.

Just to be clear, I'm not giving you an opinion on whether trademark infringement will in fact occur, but your concern over whether it might be infringement is well-founded.

[JSonnabend]

Mr. Knife's response is good.  I would clarify one point: depending on how you are using the "suggestive" word, you might not even be infringing (for example, if you are using it in its plain English meaning).

- Jeff