Words Can Get You Into Trouble

By Douglas Clark Hollmann

A client once asked me about trademarking words. She said she'd seen the American Express commercials ("Don't Leave Home Without It") and wondered what the rules were. I told her a few examples would give her a "flavor" of this area of trademark law.

Any word, or combination of design and words, can be a trademark to identify products (trademark) or services (service mark) to the public. The same word or phrase can be used by different companies, as long as the products are different. No one confuses Dove Soap with Dove Ice Cream.

Budweiser has a number of slogans they use. One is "Where There's Life, There's Bud". Another is "This Bud's For You," which brings me to the baseball catcher who threw a potato into center field one day to trick a player on third base into running home. When the umpire saw that the "ball" thrown into play was actually a potato, he threw the catcher out of the game. To add insult to injury, the catcher's team (minor league, in last place, near the end-of-season game) fired him. But the fans thought his potato trick was a great idea, and the next night the catcher was back signing potatoes, "This Spud's For You." I wonder if Bud sued him.

Whatever happened to the catcher, Budweiser did sue a Termite company in Florida for using the slogan, "Where There's Bugs, There's Life." Budweiser didn't think that was funny. They won.

Ringling Brothers Barnum & Bailey has been using the phrase "The greatest Show on Earth" for years. The same phrase is used by the Rainbow Room in New York City. Ringling Brothers didn't like that and sued. They also sued the state of Utah because the Mormon State claims that it has "The Greatest Snow On Earth." The Circus lost both cases.

The reason is evident from the last case I'll tell you about, which involves the American Express slogan my client remembered from watching television. A condom company advertised its product with the catchy phrase, "Don't Come Without It." American Express was not amused. They claimed their good mark, "Don't Leave Home Without It," was tarnished by the condom company. American Express won. Which is probably why Budweiser won against the termite company, although that's a closer case, and why Ringling Brothers did not. Dove Soap and Dove Ice Cream do not "tarnish" each other, and the same is true for bars in New York City and snow in Utah when compared to the slogan used by Ringling Brothers Circus. But if you use the same name for the same product, you'll get a letter from someone like me. Which means you have to change your stationery, your ads, your trucks, and everything else where the offending "mark" appears. Better check out that brilliant slogan before you start using it. Words can get you in trouble.

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