Comparing my product to competitors - OK to use their name?

Started by tdrx, 04-23-14 at 09:23 PM

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tdrx

Hi all -

I have come up with product A. Product A is better than Products B and C made by companies B and C respectively. Their website contains the spec for products B and C.

I'd like to make a table which has the specs for products A, B and C in a table side-by-side so that my customers can see the difference (they have asked for it repeatedly as well). I currently have a table which just says "Leading competitor" as the header of the table.

How risky is it to actually name the competitors directly on the page if I'm getting the data from their web page?

Thanks!
I'm not a lawyer or an agent - none of the above is legal advice.

JimIvey

Quote from: tdrx on 04-23-14 at 09:23 PM
How risky is it to actually name the competitors directly on the page if I'm getting the data from their web page?

It's perfectly legal but still rather risky.  Remember the Coke vs. Pepsi taste tests of the late 1970s?  The makers of Chanel perfume once sued a maker of perfume who challenged customers to smell the difference from Chanel No. 5.  Chanel lost but still dragged the other party into court.

Smith v. Chanel, Inc., 402 F. 2d 562 - Court of Appeals, 9th Circuit 1968

QuoteIn any proceeding under the Lanham Act the gist of the proceeding is a "false description or representation," 15 U.S.C.A. § 1125(a), or a use of the mark which "is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services," 15 U.S.C.A. § 1114 (1). * * * Registration bestows upon the owner of the mark the limited right to protect his good will from possible harm by those uses of another as may engender a belief in the mind of the public that the product identified by the infringing mark is made or sponsored by the owner of the mark. * * * The Lanham Act does not prohibit a commercial rival's truthfully denominating his goods a copy of a design in the public domain, though he uses the name of the designer to do so. Indeed it is difficult to see any other means that might be employed to inform the consuming public of the true origin of the design.
(emphasis in the original)

So, expect to be sued and expect to win.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

tdrx

Thanks Jim, great info.

I went through the article you linked to and there seems to be some emphasis on the word "unpatented". If products B and C had their own set of patents covering parts or all of the product (and product A did not infringe any of these patents), would the situation be different as far as making a comparison table?
I'm not a lawyer or an agent - none of the above is legal advice.

NJ Patent1

Caveat, although I recall the case, it was quite a while ago.  These are general "off the cuff" remarks.  You are aware that patents and TMs are different, they serve a different purpose.  As noted "comparisons" are risky, but done all the time.  In NYC area we have a Duane Reade on darn near every corner, CVS too.  They have "house brands" and invite consumer to "compare to {the expensive branded product}", not used in a trademark sense.  But they are big, you are not (yet), and a soft weak target for litigious concerns.  IMO, if their specs are published, small chance re-publishing is a problem.  Copyright doesn't protect facts per se. 

Where might patents come in?  Well, you must be somehow different wrt chemical composition (e.g. an anti-wrinkle cosmetic), or wrt structure (some mechanical device).  A patent-related risk might be that saying something like "same as {patent product}" would be an excuse to allege infringement (alleging you "confessed" such).  However, at the end of the day (or at end of litigation), supportable statements of fact should win, just keep statements re: the branded product factual, non-disparaging, and have solid technical support for them.  I've gotten a brand name cosmetic company to back-off by showing my clinical pics comparing results from client's $30 anti-wrinkle cream to their $200 anti-wrinkle cream (they want those to go public on PACER?).  Tipping hand was risky move, but paid-off for client (no litigation for me  :( ). 

If you've got your ducks lined-up, you might just win on summary judgment for only 30 - 50K.  Commercial speech is free speech if it is factual and not disparaging.  The big guy knows this, but will try to intimidate you into submission anyway.  "Silicon non carborundum" (don't let the bastards wear you down)

engineerprose

Hmm, in one case I know of specifically, a processor manufacturer was sued for (among other things, including patent infringement) advertising that their products were "MIPS-compatible" by the company owning the MIPS trademark. Eventually, they dropped "MIPS-compatible" from their literature (and went out of business soon after I expect). I think in the computer field it does not constitue "false description or representation," or a use of the mark which "is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services," to simply state that your product is BigName-compatible because customers know that "compatible" just means emulation of the same functionality. As long as the MIPS mark was not unduly prominent, it should've been OK IMHO. Yet they probably decided it was too tough to fight the case, which goes to show that right is not might.

JimIvey

Quote from: tdrx on 04-24-14 at 04:29 AM
I went through the article you linked to and there seems to be some emphasis on the word "unpatented". If products B and C had their own set of patents covering parts or all of the product (and product A did not infringe any of these patents), would the situation be different as far as making a comparison table?

NJP1 gave good info, but I'll answer is a more case-specific manner.  The case emphasized "unpatented" because the advertising in question claimed the product was a "copy" of Chanel No.5.  The case goes so far as to say you can directly copy any unpatented product so long as consumers aren't confused as to the source of your products -- don't mistakenly believe your product comes from the trademark owner.  Of course, if patents are involved, copying wouldn't be legal and the court's statement wouldn't be accurate.

In essence, Chanel was suing because Smith said disparaging things about their trademarked products.  There's no cause of action for that.  It's all about confusion as to source of the goods.

Quote from: engineerprose on 04-24-14 at 08:18 AM
Hmm, in one case I know of specifically, a processor manufacturer was sued for (among other things, including patent infringement) advertising that their products were "MIPS-compatible" by the company owning the MIPS trademark. Eventually, they dropped "MIPS-compatible" from their literature (and went out of business soon after I expect).

Well, there are two things that can easily distinguish that case from Smith v. Chanel.  First, patents are involved.  Second, how you use the mark makes all the difference.  The sole test is source confusion in the marketplace.

There are many standards organizations (e.g., MPEG) that package as many patents covering aspects of a standard as they can get their hands on with trademarks.  As a matter of trademark law, you can say your video comports with the MPEG standard for audiovideo stream formats, but you can't display "MPEG" (assuming that's a trademark) in a manner on you video or tools that suggests you have the blessing of the MPEG consortium. 

However, from what I understand, MPEG doesn't rely solely on trademarks.  They own key patents that make it impossible (at least in theory) to make MPEG-compatible video streams without infringing their patents.  They license the patents and trademarks together.  In essence, the trademark advertises that you're an authorized licensee of their technology.

Interestingly, when the basic MPEG patents expire (assuming they haven't already), the trademark will likely expire too.  See the famous Shredded Wheat case.  Although, perhaps the MPEG standard continues to evolve with perpetual addition of improvement patents.  I'm not sure what happens if you use an older standard for which all patents have expired -- e.g., MPEG-2.  If the mark "MPEG" is still in force and applied to only newer, patented versions, I'm not sure whether that's a problem for people using the public domain versions of MPEG.  My guess would be that you'd be free to use "MPEG" -- either as nominative use or because MPEG will be considered to have become generic, referring both to public domain standards and proprietary standards implemented by anybody.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

engineerprose

Quote from: JimIvey on 04-24-14 at 08:12 PM
As a matter of trademark law, you can say your video comports with the MPEG standard for audiovideo stream formats, but you can't display "MPEG" (assuming that's a trademark) in a manner on you video or tools that suggests you have the blessing of the MPEG consortium.

Hmm, so, MIPS-compatible might have caused source confusion in the marketplace? Also one has to bear in mind that these were not run of the mill PC processors that Joe Sixpack would be interested in buying. They were mainly for embedded use, so buyers would have been, for the most part, embedded software programmers involved in product architecture (or whatever). I would think they would generally be expected know exactly what "compatible" means. Or are you saying that, because it may have been common knowledge that MIPS is a proprietary architecture locked down by patents, an embedded software programmer would have thought that -any- MIPS-compatible processor would necessarily have to have been licensed from the owners of MIPS?

MYK

What does it mean to be "compatible"?  Are they certain that their processors will, in every situation, perform identically to the MIPS chips?  How about instruction timing -- did they manage to duplicate the exact cycle times, in case that became an issue for a particular application?  What about at temperature extremes, what about under varying electrical conditions, radiation hardening, and so on?

If all they meant was "uses the MIPS instruction set", well, say that.  Assuming they've gotten a proper license (something AMD had to do for their Intel-compatible CPUs, IIRC).
"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

JSonnabend

I think this discussion over analyzes the issue. 

You can use a competitor's brand when referring to the competitor's branded product.  You can do that in comparison advertising.  There is no trademark issue.

When making comparisons, you have to make sure that the representations made are accurate and not misleading.  That's a false advertising issue.

The rest of this discussion is academic.

- Jeff
SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com

JimIvey

Quote from: engineerprose on 04-25-14 at 11:24 AM
Hmm, so, MIPS-compatible might have caused source confusion in the marketplace? Also one has to bear in mind that these were not run of the mill PC processors that Joe Sixpack would be interested in buying. They were mainly for embedded use, so buyers would have been, for the most part, embedded software programmers involved in product architecture (or whatever). I would think they would generally be expected know exactly what "compatible" means. Or are you saying that, because it may have been common knowledge that MIPS is a proprietary architecture locked down by patents, an embedded software programmer would have thought that -any- MIPS-compatible processor would necessarily have to have been licensed from the owners of MIPS?

I'm not sure I understand your confusion.  Perhaps you're thinking that trademarks can only be used by a "source" in the narrowest sense, e.g., a manufacturer.  There are many trademarks that aren't linked to any manufacturer.  A classic example is the ubiquitous "UL" trademark that indicates the item in question has been tested by Underwriters Labs and passed whatever tests. 

As for "MIPS", I assume it's a trademark.  As for "source", the mark could indicate that the designer of the MIPS-compatible processor had access to proprietary design specs and perhaps even JTAG equipment to ensure proper performance.  So, the processor could come from any licensee of the trademark, not necessarily directly from the owners of the trademark.

Regarding likelihood of confusion.... It could be a stylized trademark.  I'm looking at a blank DVD and it includes a stylized "RW" that could be a trademark.  It might be that using the RW in a common font that's not stylized is not trademark infringement.  The same could be true for "MIPS".  As MYK noted, it's possible that the processor in question just executes the MIPS instruction set as published.  In that case, you should be able to say that your chip executes the MIPS instruction set because you're using "MIPS" to refer to the products that properly use the MIPS trademark, not to your own products.

The bottom line is that we can't infer from the mere fact that someone stopped using "MIPS compatible" after being sued for it that Smith v. Chanel is no longer good law.  How they used the mark matters, and they might even have just stopped using it as part of settlement without having reached any decision on the merits at all.  It's just insufficient data.

Regards.
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

engineerprose

Quote from: JimIvey on 04-25-14 at 08:01 PM
Quote from: engineerprose on 04-25-14 at 11:24 AM
Hmm, so, MIPS-compatible might have caused source confusion in the marketplace? Also one has to bear in mind that these were not run of the mill PC processors that Joe Sixpack would be interested in buying. They were mainly for embedded use, so buyers would have been, for the most part, embedded software programmers involved in product architecture (or whatever). I would think they would generally be expected know exactly what "compatible" means. Or are you saying that, because it may have been common knowledge that MIPS is a proprietary architecture locked down by patents, an embedded software programmer would have thought that -any- MIPS-compatible processor would necessarily have to have been licensed from the owners of MIPS?

I'm not sure I understand your confusion.  Perhaps you're thinking that trademarks can only be used by a "source" in the narrowest sense, e.g., a manufacturer.  There are many trademarks that aren't linked to any manufacturer.  A classic example is the ubiquitous "UL" trademark that indicates the item in question has been tested by Underwriters Labs and passed whatever tests. 

As for "MIPS", I assume it's a trademark.  As for "source", the mark could indicate that the designer of the MIPS-compatible processor had access to proprietary design specs and perhaps even JTAG equipment to ensure proper performance.  So, the processor could come from any licensee of the trademark, not necessarily directly from the owners of the trademark.

Regarding likelihood of confusion.... It could be a stylized trademark.  I'm looking at a blank DVD and it includes a stylized "RW" that could be a trademark.  It might be that using the RW in a common font that's not stylized is not trademark infringement.  The same could be true for "MIPS".  As MYK noted, it's possible that the processor in question just executes the MIPS instruction set as published.  In that case, you should be able to say that your chip executes the MIPS instruction set because you're using "MIPS" to refer to the products that properly use the MIPS trademark, not to your own products.

The bottom line is that we can't infer from the mere fact that someone stopped using "MIPS compatible" after being sued for it that Smith v. Chanel is no longer good law.  How they used the mark matters, and they might even have just stopped using it as part of settlement without having reached any decision on the merits at all.  It's just insufficient data.

Regards.

Sure, I wasn't trying to say that Smith v. Chanel is no longer good law, I was just trying to bring another example to better understand the bounds of unlicensed mention of another's trademark in connection with one's products. It's a frequent occurence in the marketplace that you must assert your products to be in some way equivalent to get any interest from buyers. I'm just failing to see the difference between "executes the MIPS instruction set" (supposedly OK) and "MIPS-compatible" (maybe not OK). It could be a fine-line thing, or, as you say, they indeed may have settled without reaching the merits of the trademark dispute.

engineerprose

#11
Quote from: MYK on 04-25-14 at 02:04 PM
What does it mean to be "compatible"?  Are they certain that their processors will, in every situation, perform identically to the MIPS chips?  How about instruction timing -- did they manage to duplicate the exact cycle times, in case that became an issue for a particular application?  What about at temperature extremes, what about under varying electrical conditions, radiation hardening, and so on?

If all they meant was "uses the MIPS instruction set", well, say that.  Assuming they've gotten a proper license (something AMD had to do for their Intel-compatible CPUs, IIRC).

Well, at all times MIPS was the name for the instruction set architecture, not any specific chips. The specific "official" MIPS chips were called RX000, for increasing values of X. Instruction set architectures (usually) aren't concerened with cycle times and certainly not temps, rad-hard, etc. Compiled programs aren't supposed to make assumptions about the cycle times (and compilers will ensure this unless they are faulty). If a program -does- make such assumptions, e.g., based on the behavior of the R2000 chip then the problem is that the -program- isn't MIPS-compatible. So the off-brand processors could fairly have been MIPS-compatible, but perhaps not, say R2000-compatible.

In the computer arts, you're not supposed to need a license to an API, only to a specific implementation. There is no basis for enforcing a license to an API. Copyright would cover only a specific implementation, and does not apply to functional names/labels used in the APIs. Of course, depending on what the API requires you may be left scratching your head trying to come up with a way to implement it that doesn't fall within a patent claim, but that's not necessarily the case.

JSonnabend

Jim's reference to the "UL" mark is not apt, as it is a "certification mark".  Certification marks are a special subset of trademarks with a particular "source identifying" function.

The remainder of this discussion continues inanity.  Nominative use is permitted, including in comparative advertising.

- Jeff
SonnabendLaw
Intellectual Property and Technology Law
Brooklyn, USA
718-832-8810
JSonnabend@SonnabendLaw.com



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