Clients often ask whether—and, if so, when—they must use the ® and ™ symbols, or other forms of attribution, when using another company’s trademarks. This question arises in a variety of settings. For example, a company may want to use another’s trademark in order to make a comparative advertising claim, to state that its product is compatible with another company’s product, or to identify a business relationship with another company. The rules for the attribution of another’s trademarks are not cut and dry. Rather, it is a circumstance-driven decision, based on the specific nature of the use in question. While appending the ® or ™ symbol to another’s mark and including a statement identifying the mark owner is often a good practice, a recent decision by a federal district court suggests that, in some cases, this may not be necessary.
In Arborjet, Inc. v. Rainbow Treecare Scientific Advancements, Inc., the federal court for the District of Massachusetts heard a dispute between a manufacturer and a former licensee. Arborjet, Inc. (Arborjet) manufactures and sells TREE-age, a pesticide solution used on trees. From 2008-2013, Rainbow Treecare Scientific Advancements, Inc. (Rainbow) owned an exclusive license to distribute TREE-age. After termination of the agreement, Rainbow began marketing and distributing ArborMectin, a pesticide solution similar to TREE-age. Rainbow described ArborMectin in an e-mail blast to consumers as “improved TREE-age!” and its website included similar references to Arborjet and TREE-age.
Arborjet filed suit against Rainbow, bringing a number of claims, including a Lanham Act claim for false designation of origin based on Rainbow’s use of Arborjet’s trademarks in its marketing materials and on its website. Arborjet claimed that Rainbow’s use of its trademarks would cause consumers to believe that Rainbow produces both ArborMectin and TREE-age, and that ArborMectin is the successor product to TREE-age. Arborjet also requested that the district court enter a preliminary injunction requiring Rainbow to append the ® symbol to any use of Arborjet’s trademarks, and to add a footnote stating “Registered trademark of Arborjet,” throughout the course of the litigation.
Considering the preliminary injunction request, the court found that Arborjet was unlikely to succeed on the merits of its false designation of origin claim. Specifically, the court felt that consumer confusion, a requirement for a successful false designation claim, was unlikely on the question of who produces TREE-age. Admitting that ArborMectin and TREE-age were similar products (a consideration weighing in favor of consumer confusion), the court focused on the fact that the ArborMectin and TREE-age marks are dissimilar in terms of their overall commercial impression, and the fact that the products are typically purchased by licensed professionals, a sophisticated consumer base unlikely to be confused by Rainbow’s comparative claims.
Despite this finding, the court entered the preliminary injunction against Rainbow, requiring the company to provide increased attribution when using Arborjet’s trademarks. The injunction was appealed and ultimately reversed by the First Circuit, which explained that an injunction cannot be entered unless the plaintiff is likely to succeed on the merits of its claim. Regardless, the district court’s underlying decision on the consumer confusion question remains a significant take away from the case.
As noted above, when and how to properly attribute another’s trademarks is a case-by-case decision, and the safest route is to use the ® or ™ symbol and to include a statement identifying the mark owner. Further, companies should always be sure that their use of another’s mark does not falsely or misleadingly suggest an endorsement of their product or service by the mark owner. With that said, the district court’s decision in Arborjet, Inc. v. Rainbow shows that there may be some situations in which no attribution is necessary.