[802SEC] FW: Trademark Usage Guidelines
Dear SEC,
Attached below is additional information on trademark useage guidelines from
Claudio Stanziola and Pam Deese, the IEEE-SA legal counsel Dorsey and
Whitney. There will be a meeting held on Wednesday, July 10, from 10:00
a.m. to 11:00 am to discuss this issue. I will have an IEEE 802
representative attend that meeting..
Regards,
--Paul
-----Original Message-----
From: owner-ieee-802-team-tf@majordomo.ieee.org
[mailto:owner-ieee-802-team-tf@majordomo.ieee.org]On Behalf Of
c.stanziola@ieee.org
Sent: Monday, June 24, 2002 8:38 AM
To: ieee-802-team-tf@ieee.org
Cc: k.rupp@ieee.org; j.t.walker@ieee.org; y.hoSang@ieee.org;
a.ortiz@ieee.org
Subject: Trademark Usage Guidelines
All
In light of the continuing confusion/concerns expressed about the proper
use of
IEEE's standards trademarks, I am forwarding a set of some basic principles
concerning the use of trademarks by companies other than the trademark
owner. These are general principles prepared by Dorsey & Whitney. These
principles are being provided to further the discussion on this issue
currently scheduled for July 8th in Vancouver. IEEE-SA legal counsel, Ms.
Pam Deese, shall be present at the meeting to address your concerns and
entertain questions.
Claudio
1. The first and most important thing to keep in mind is
that a trademark owner does not have a complete monopoly over the use of
its trademarks by others. There are a number of types of uses that are
permissible without the consent or license of a trademark owner.
2. For example, if truthful, Company X can, without
permission or license from Company Y, inform buyers that Company X's parts
can fit with or are compatible with Company Y's product, so long as the
way in which that information is communicated does not mislead consumers
into believing that Company Y has approved, endorsed or sponsored Company
X's products. Examples that have been approved in litigated cases include:
Brand X sponges "will fit as replacements" in Brand Y mops; Brand X auto
repair parts are "made to fit Brand Y" and Brand X software "will run on
and is compatible with" Brand Y hardware. Again, I want to emphasize that
the representation must be truthful - if the product doesn't really fit
with, or isn't fully compatible as represented, then Company Y could sue
Company X for false advertising.
3. Similarly, it is permissible for Company X to refer to
Company Y's trademark to describe Company Y's products. The most familiar
example is comparative advertising - the advertising for Company X's
products could say "less expensive than" or "more powerful than" Y's
products without infringing Company Y's trademark rights. In another case
that was litigated, a newspaper was permitted to run a contest promotion
in which readers selected their favorite member of the band New Kids On the
Block. When New Kids sued to stop it, they lost, because the newspaper did
not mislead anyone into believing that New Kids had authorized or sponsored
the contest and there was no other way to refer to the band other than by
using their name.
4. Whether Company X's reference to or use of Company Y's
trademark will be held misleading as to the source, sponsorship or
endorsement of Company X's products is a factual question and depends on
the exact language used and the manner in which the reasonable consumer
would view that language. For example, it was found to be misleading for
Stouffer's to advertise "Stouffer's presents Weight Watchers exchanges for
all 28 Stouffer's Lean Cuisine entrees" because that statement was viewed
as falsely implying an endorsement by Weight Watchers. However, in another
case involving these two companies, it was permissible to state in an ad
that Stouffer's was presenting exchanges for LEAN CUISINE items "to fit
into your Weight Watchers program." As you can see, sometimes it can be a
fine line between permissible and impermissible use of another company's
trademarks.
5. In general, it is not permissible for Company X to use
Company Y's trademarks in its distinctive typestyle or logo form, because
that often communicates an officially permitted use by Company Y. In
addition, if Company Y's trademark appears too prominently on labeling
relative to Company X's trademark or other labeling material, that might be
found misleading as well. (Note that there can be exceptions to this rule;
e.g., if an automotive supply retailer has 30 stickers of automobile logos
on its front door to indicate that it carries parts from all of these
manufacturers, that is likely permissible, since most consumers would not
believe that each of the 30 manufacturers was the source of the retail
services).
6. Disclaimers of non-affiliation or non-endorsement can
sometimes be helpful and sometimes not. If read carefully, they should help
dispel any suggestion of endorsement or sponsorship. On the other hand,
some companies believe that disclaimers are not read carefully and that
when consumers see Company Y's name on Company X's product - even though
it's in the text of a disclaimer - it heightens the association between
Company X and Company Y. In one case involving a seller of substitute game
cards to use with the TRIVIAL PURSUIT game, it was held to be misleading
for the seller to repeatedly use a disclaimer featuring the TRIVIAL PURSUIT
mark.
7. So when is a license necessary? A license would
definitely be necessary if Company X wanted to sell its product under
Company Y's trademark. A license would also be necessary if Company X
wants to use Company Y's trademark prominently and in its distinctive logo
form on product labeling or advertising, or if Company X wants to be able
to otherwise communicate to its customers that Company Y has approved or
endorsed its product or is the sponsor of Company X's products.
8. However, if Company Y grants a license to Company X
for any of these types of trademark uses that require a license, trademark
law also requires that Company Y exercise control over the quality of
Company X's products. How much quality control is necessary is not an easy
question to answer - it can't be none, and the law basically says the
necessary degree of control is that which the reasonable consumer would
expect given the nature of the product. A licensor can delegate its
quality control function to a third party monitoring company, assuming that
the licensor is exercising reasonable supervision over that monitoring
company.
9. To take two examples, in an apparel license for NFL
merchandise, NFL Properties would likely review a sample jersey to see that
it was a well-made item using quality fabrics and material. For Du Pont
STAINMASTER carpet, the consumer would likely expect that the licensee's
carpet met Du Pont's standard for stain-resistant fibers. A trademark
licensor usually also wants to assure that the trademark is being
"displayed" properly, i.e., in the correct logo form, or in certain colors
or typestyle, but the quality control function generally requires more than
just proper display of the trademark.
10. Policing the Market -- As I discussed above, there
are situations in which third parties can properly use another company's
trademark without a license. In these situations, it can be important for
two reasons to monitor the marketplace for improper uses. First, with
regard to a specific improper use, if the trademark owner wants to take
enforcement action against that improper use and it turns out that the use
has been in place for many years, a court could deny relief on equitable
grounds, finding that the trademark owner unreasonably delayed in taking
action. In addition, if improper third party uses become too widespread in
the marketplace, a court could conclude that a trademark has lost its
source-indicating significance and has become abandoned. In situations in
which a trademark is being used under license, there is an obligation to
monitor the products marketed by the licensees (as set out in Paragraph 8),
as well as an obligation to monitor the marketplace for products improperly
using the mark without a license. Not only will licensees be unhappy if
they have paid for a license while others are using the mark in the same
fashion without a license, but the problems I just mentioned of delay and
potential abandonment arising from the failure to take action against
improper uses would apply as well too.
* * *
In applying these basic principles to IEEE's Standards
trademarks, you can see that there are likely some uses of these trademarks
by companies other than IEEE that would be permissible without a license.
However, these uses must first of all be truthful - e.g., someone cannot
say that a product conforms to a standard if it does not in fact conform,
or only partially conforms, or if it conforms to an outdated version of the
standard. In any of these instances, IEEE would be well within its rights
to protest and/or sue for false advertising if the use didn't cease. A
company should also generally not be using any distinctive logo forms for
Standards marks without IEEE's permission.
IEEE might also choose to provide advice to manufacturers
who use its standards about what type of labeling statement IEEE would view
as not misleading -- in effect a "safe harbor" of permissible use. IEEE is
under no legal obligation to provide such guidelines - it could just as
well sit back and review marketplace uses and take action when necessary.
But IEEE could decide that it is affirmatively in its interest to provide
labeling guidelines - not only to cut back on the need to take enforcement
action, but also to encourage other companies to use and promote the
standards by providing guidelines as to what IEEE would approve and not
challenge. If the IEEE want to provide such "safe harbor" guidelines, it
must have a
fair amount of discretion to decide what you believe would not be
misleading. One word of caution, the IEEE may be in effect waiving its
right to
object if a manufacturer follows IEEE guidelines but it turns out that the
actual labeling, in its full context that the IEEE will not have reviewed
in
advance, is misleading.