RAISING THE BAR
Papa John’s packaging displaying its ad slogan
times better” did qualify as puffery, because the claim was so exaggerated that consumers wouldn’t think it was verifiable. BRAGGING MAY BE OK Sometimes it’s difficult to distinguish between actual claims and “mere puffery.” Stover Seed Co.’s advertising slogan “Less Is More” for grass seed was found to be generalized boasting upon which no reasonable buyer would rely and thus, puffery. But, Stover also claimed that its grass required “50 Percent Less Mowing”—a claim of measurable superiority. In another case, Pizza Hut sued Papa John’s based on Papa John’s ad slogan “Better Ingredients. Better Pizza.” The Court of Appeals, however, found that the slogan by itself was not an “objectifiable statement of fact upon which consumers would be justified in relying.” COMPARE, BUT DON’T CONFUSE Some statements cross the line from puffery to falsehood. Announcing that your toy outperforms another company’s in some measurable way (contrary to evidence) violates trademark law. Thus, to win a false advertising claim under the law, it must be shown that the offending ad contained a false or misleading representation of fact that was likely to cause confusion about the defendant’s products or services and that injured the company that was identified in the ad. An example is the Advil v. Tylenol ad, in which the claim for Advil was, “Like Tylenol, Advil doesn’t upset my stomach,” where the court wrote, “If it were not for their ‘like Tylenol’ claim, the Advil commercials would probably fall within the acceptable range of commercial puffery. But, Advil is not ‘like Tylenol’ in the respect of its effect on
the stomach.” In the earlier dispute between the two companies, the Court stated: A misleading comparison to a specific competing product necessarily diminishes that product’s value in the minds of the consumer. AHP (the maker of Tylenol) was deprived of a legitimate advantage and reduced consumers’ incentive to select Tylenol rather than Advil when it falsely implied that Advil is as safe as Tylenol in all respects. As a federal Court of Appeals judge recently wrote of comparative advertising in a case involving two steel companies, in which one company claimed falsely that it offered features in its steel products that its competitor did not offer: Most everyone expects a little audacity—maybe even a little mendacity—in their advertising. Sometimes it can even prove amusing. Like the local greasy spoon’s boast that it pours the “world’s best cup of coffee.” Or the weight loss company’s promise that its miracle pill will “literally melt the pounds away.” But sometimes advertising crosses the line from harmless hyperbole into underhanded deception with material commercial consequences. That’s when laws like the federal Lanham Act step in, allowing those harmed by false advertising to recover for their injuries. As always in trademark law, the test is likelihood of confusion on the part of the consumer—as to sponsorship, affiliation, or source. If the ad is not likely to confuse potential customers, a company can lawfully incorporate a competitor’s trademark in its ad or packaging. So if you’re going to use your competitor’s trademark to compare your goods or services to those of your competitor, the purpose of using the competing trademark must be to convey information, and not to confuse consumers about the source of your toys. To avoid liability for infringement or misleading or deceptive ads, consult trademark counsel early in the creative process. With assistance, your company can properly use a competitor’s trademark in its promotions. » Howard N. Aronson has provided legal counsel to toy companies for the past 30 years. He is the managing partner of Lackenbach Siegel LLP, an intellectual property law firm recognized for its nine decades of handling toy companies. Grateful acknowledgement is extended to Eileen DeVries, counsel at Lackenbach Siegel.
THE RULES OF COMPARISON • Comparative advertising must be truthful and non-deceptive. The intent, as well as the connotation of the ad must be informational only. Hence, the ad can’t be used to discredit or to attack unfairly a competing product or service. • The purpose of the comparative advertisement must be an actual comparison of goods or services not a veiled attempt to form an association between a product or service and that of the competitor. Hence, the product named in the ad has to be one that actually is in competition with the goods or services of your company. Make sure that if you make a comparison with the goods or services of a competitor, the comparison is a legitimate one, not just a pretext for using your mark together with the mark of the competitor. • A comparative ad should identify the competing product or service, as well as the company that provides that product or service, in a way that is fair and proper. The comparison of the products and/or services should be made between similar properties and the comparison should be made on a feature-to-feature basis. The comparison should be truthful and factual and not be made in a manner that degrades the product or the competing company. • Any comparisons made should be factual in nature. Any testing needed to make the comparison should be done by an objective testing source, preferably an independent testing source. Ambiguous or subjective comparisons should be avoided. IP counsel can help decide whether or not there is an adequate factual basis for the comparison advertising. • All the trademarks in the ad should be used in the same manner. The competitor’s trademark should not appear more prominently than your own, as this could lead to confusion. Only the competitor’s word mark should be used. There is no comparative purpose in the use of a competitor’s logo or slogans.
TOYBOOK.COM | September/October 2016 | THE TOY BOOK 111