By Timothy A. Wiseman
Trademark law is designed to serve multiple purposes. Trademark law is intended both to protect consumers from potential confusion and to protect the reputations of producers of goods who invest in creating, advertising, and protecting a trademark. See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163-64, 115 S. Ct. 1300, 1303 (1995). Trademark law though is not intended to stifle otherwise legitimate communications.
In general, a producer of goods is entitled to refer to the trademark of another producer of goods to draw comparison between the goods so long as it does not create confusion about the source of each product. See Smith v. Chanel, Inc., 402 F.2d 562, 563 (9th Cir. 1968). This is frequently referred at as comparative advertising. One of the best known cases dealing with this is Smith v. Chanel. In Smith, a producer of perfumes claims to have duplicated exactly the fragrance of Chanel #5. Id. at 563. The producer of the duplicate used advertising that included the line “We dare you to try to detect any difference between Chanel #5 (25.00) and Ta’Ron’s 2nd Chance. $7.00.” Id.
The Ninth Circuit Court of Appeals stated “The principal question presented on this record is whether one who has copied an unpatented product sold under a trademark may use the trademark in his advertising to identify the product he has copied. We hold that he may, and that such advertising may not be enjoined under either the Lanham Act, 15 U.S.C. § 1125(a) (1964), or the common law of unfair competition, so long as it does not contain misrepresentations or create a reasonable likelihood that purchasers will be confused as to the source, identity, or sponsorship of the advertiser’s product.” Id. They reached that conclusion as a refinement of several earlier cases and noted that it was consistent with the purposes of trademark law.
While it is generally permissible to refer to another trademark holder’s goods in advertising for the purposes of inviting comparison, it is important that the advertising does not create confusion as to the source of the products in question. The Second Circuit upheld an injunction preventing use of an advertisement that compared two products when the nature of that advertisement was likely to lead to confusion as to the producer of the product being sold. Charles of the Ritz Group, Ltd. v. Quality King Distrs., Inc., 832 F.2d 1317, 1324 (2nd Cir., 1987). As noted above, it is also necessary that the comparison be truthful. See Calvin Klein Cosmetics Corp. v. Lenox Labs., Inc., 815 F.2d 500, 503 (8th Cir. 1987).
As a purely practical matter, it is noteworthy that litigation over trademarks can be expensive. Even though truthful comparative advertising that does not create confusion over the source is protected by the law, a user of comparative advertising may be risking a lawsuit that could be costly even if the user of comparative advertising is ultimately vindicated.
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 See also Mary LaFrance, Understanding Trademark Law, P. 1-2 (3d ed. 2016)
 See also Calvin Klein Cosmetics Corp. v. Lenox Labs., Inc., 815 F.2d 500, 503 (8th Cir. 1987)(“An imitator may use in a truthful way an originator’s trademark when advertising that the imitator’s product is a copy so long as that use is not likely to create confusion in the consumer’s mind as to the source of the product being sold.”); Mary La France, Understanding Trademark Law, P. 339 (3d ed. 2016).