Trademarks and Industry Practices

Trademarks and Industry Practices

Since when is Fair Use not fair?
By Rachael Dalton-Taggart

A short while ago we participated in a fairly heated discussion with a major software vendor which insisted that a third-party could not use its trademarked product names at any time without permission. Actually, what was said was:

“Also, mentioning our company name, [and products] without a review from us is not a practice in our industry.”

Anyone who knows me understands that I am not given to caving in to unfair demands even if it is from a huge software vendor. After a little chuckle, however, we did commence some fairly detailed research into the current legal ramifications of trademark use. This research also brought about discussions within the office about ethics and legalities. What should PR and marketing professionals expect from “our industry” besides heavyweight demands and dictats? And are those demands ethical or legal? The true example above may, in fact, be indicative of what to expect from our industry. Should we put up with it?

First a brief trademark lesson – The US Patent and Trademark Office describes it as follows"
“A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.”

Any of us with even basic experience understands that a trademark can be a very important part of a company’s intellectual property. And, critically, trademarks have to be protected through enforcement – your company’s enforcement. If you fail to monitor and enforce correct use of a trademark, then you risk losing the trademark or failing on the branding. For example, a week or so ago a CAD website rewrote the title of one of our client’s press releases: Instead of using Pro/ENGINEER, the publication abbreviated it to Pro/E. The people at PTC were hopping – at first they wanted to hop on us but we were in the clear – indeed, with this research, we had just refreshed on PTC trademark use, so we were ahead on that one!

But in the US you also cannot prevent what is called Fair Use of trademarks which comes in under the free speech acts. For this I turn to Trademark and Patent lawyer, Craig Barber (www.barberlegal.com) to help us through that minefield. “In general, the "fair use" defense to trademark infringement holds that words which strictly describe a product, service, or source may be used. In other words, it is OK to write or talk about "McDonalds" brand restaurants or foods in a strictly descriptive way, for example, in business news. But it is not OK to try and copy (i.e. infringe) on a trademark – for example "Come eat under the GOLDEN ARCHES at MACDONALDS restaurant and meet owner Donald MACDONALD!" This would be a sure route to receiving a lawsuit from the real MCDONALDS corporation!”

What this means in our industry is that if you make a fair, true statement, and by no means infringe upon someone’s established trademarked name by claiming it as your own or copying it, then you have a right to use it. Emphasize that by using any ‘TMs’ and ‘Rs’ and having the right disclaimers at the end.

So how do CAD companies get around this loophole?

Two methods are evident. First, with any third-party agreement with another company, you generally give up your fair use rights to the trademarks. i.e. If you sign a developer agreement with another software company, chances are that you have agreed to get approval for use of the trademarked names.

Nicole Pack at Autodesk PR, explains : “…We do prefer to review any press releases that reference Autodesk’s products. We don’t have a general policy about this, but do have specific policies for partners and vendors. Most companies that provide compatible products are partners. In general, we just like to ensure that our products are being positioned accurately.”

Jim Phelan at UGS PR also advised on UGS’ position. “If a company creates a product that, in their view, “works with” or “interfaces to” or “complements” one of our products, we would appreciate the courtesy of letting us review the release prior to distribution but they are under no obligation to do so as long as they do not imply in any way that UGS endorses their product or agrees with their opinion. They would, of course, be under a legal obligation to indicate proper trademarks and service marks as well as their ownership.”

UGS’ legal department also chimed in with some clarification on appropriate usage of its product names. “There is a significant difference between “The Acme UGS Translator” and “Acme Translator for UGS”. The latter describes factual, possibly unauthorized, interoperability whereas our view of the former is that it creates insurmountable consumer confusion. Thus, the former would warrant a formal Cease & Desist letter but in the latter situation the response would be much more informal, if any.”

A second, but more passive, way of controlling trademarks is to provide concise information on how the trademarks should be used. Autodesk and PTC publish their trademark usage guidelines on their websites as, we believe, a way to assist with Fair Use and at least give people a chance to get it right. PTC’s trademark guidelines are available at http://www.ptc.com/company/policies/trademark.htm and Autodesk’s are at http://usa.autodesk.com/adsk/servlet/item?siteID=123112&id=924623. UGS and Dassault do not publish theirs, but I am happy to say that UGS takes a fair view and is willing and responsive to trademark issues.

Please note that the same questions were sent to PTC and Dassault Systems but they did not respond.

So where are you headed dear?
So here’s what it comes down to: If a software vendor has signed an agreement with another (usually major) vendor, the chances are pretty good that they have signed their Fair Use rights away – they have to get trademark usage approved.

However, any company can create software that works with another company’s application, even in the absence of any agreement. If that company then makes a true statement about it, there is no course of action. It is probably wise to ensure the trademark usage is correct, but under the apparent rules, there is no obligation to have approval.

So can a major software company demand that all trademark usages are approved? Not without some sort of prior agreement with the third party. Otherwise it is simply a dictat that is unsupported by law.

Can they slap your wrist for getting their trademark wrong? Absolutely. But as UGS implies, it tends to be somewhat informal unless there is a true intent to damage the company’s IP.

Should we put up with behavior that uses intimidation to enforce issues that are not supported by law? I think not and never should a company be given that right simply because they are bigger and possibly meaner than everybody else.

My advice - Read up on the trademark guidelines, follow them, and ensure your clients have no existing agreements (otherwise the rules change). Do not cave to every pedantic demand for approvals simply because a company thinks they deserve to have the right. We shouldn’t be forced to put up with this and no company has the right – in the US at least – to demand it without those nasty little prior agreements in place.

Comments

[Wanda]

Great article. Really liked reading it.