Using Other Companies' Brand Names in Store Menu and Decorations

[Skat]

Two questions:

1 - What if anything, do I need to do if I want to note on my upcoming menu that one of my items contains a brand name product? For example, if I make a 'cookies and cream' ice cream, with Oreos, can I call the flavor Oreo?

2 - I was thinking of having some decoration on one wall (maybe even as wallpaper), which would be a repeating pattern of all the ice cream flavors I will be offering along with the name of my store. It would be decoration, with the words/flavors going in all different directions. But again, it would just be words, like in the menu. Would using the word 'Oreo' here be different than the use in question 1?

[jk]

If you were using actual Oreo's, you could say "cookies and cream with Oreo cookie pieces or something similar. In that use, it is descriptive. If you advertise it as "Oreo's" there is the likelihood that people will assume the Nabisco company has approved of the ice cream product which you cannot do without their permission.

as to using the name "Oreo's" as you suggest; again, it implies there is some company connection. Most likely not allowed without permission.

[Skat]

If you were using actual Oreo's, you could say "cookies and cream with Oreo cookie pieces or something similar. In that use, it is descriptive. If you advertise it as "Oreo's" there is the likelihood that people will assume the Nabisco company has approved of the ice cream product which you cannot do without their permission.

There must be something I am not getting, because aren't ALL regular ice cream flavor names descriptive? An ice cream called "Vanilla" is describing vanilla flavored ice cream. "Chocolate Chip" is describing one with chocolate chips mixed in. "Oreo" is describing one with Oreos mixed in. Sure two of my examples use generic and one a brand name, but they are all just shorthand for "Ice cream flavored with ____." If you are telling me I can get away with "Ice cream flavored with Oreos" but not "Oreo" even though they mean exactly the same thing, then the law is crazy.

If the menu says Ice Cream Flavors, and then lists all the options, what is the problem?

[jk]

nobody owns the name; vanilla or chocolate chip. Oreo is a trademarked name. Because of that, Nabisco likes to control who uses and how the name is used.

[LawResearcherMissy]

For example, if I make a 'cookies and cream' ice cream, with Oreos, can I call the flavor Oreo?

Not without contracting with Nabisco and paying a stiff licensing fee.

Would using the word 'Oreo' here be different than the use in question 1?

Nope. The answer is the same - you can't use the name without permission from Nabisco, and if you can't pay their licensing fees, the answer will be "No, and if you try, we'll sue you back to the Stone Age."

[Skat]

nobody owns the name; vanilla or chocolate chip. Oreo is a trademarked name. Because of that, Nabisco likes to control who uses and how the name is used.

You misunderstand my point. If using 'Oreo' descriptively is alright, as you said earlier, such as "Ice Cream flavored with Oreo" then how exactly is that any different from having a heading "Flavors" and then having a list of what each flavor is? In both cases the meaning is the same, in that each ice cream is flavored with a certain ingredient. In each case it is "descriptive" which you said was ok in your first post. Can you clarify this point?

Not without contracting with Nabisco and paying a stiff licensing fee.

What about the "descriptive" use exception jk noted (and then forgot about). Does that exist? I mean Oreo Flavored Ice Cream is not really any different than "Oreo Ice Cream" as it is exceedingly obvious in the latter case that the Ice Cream contains Oreos.

[jk]

No, I didn't misunderstand your point. It is you that does not understand the difference.

I just don't know how to explain it to you any simpler. If you use their product, you can say so but you cannot use their name in any way that would suggest it is a Nabisco endorsed product unless it actually is. Even then Nabisco would have to specifically authorize the use of the name Oreo because they legally own it and can control how it is used.

Let me try to explain it using some different products. Computers and computer chips.

If you have a computer with an Intel processor in it, you can say so but you cannot call it an Intel computer because it isn't. The only thing Intel is the processor. Putting the name Intel on the computer (as the name of the computer) suggests it is endorsed and authorized by Intel. So, if you have a bunch of crap computers, you have now sullied the name of Intel by claiming your computers are Intel computers.

Y


What about the "descriptive" use exception jk noted (and then forgot about). Does that exist? I mean Oreo Flavored Ice Cream is not really any different than "Oreo Ice Cream" as it is exceedingly obvious in the latter case that the Ice Cream contains Oreos.

No, I didn't forget about anything. You simply do not understand the difference between using the name as describing what is in the ice cream compared to using the name as the flavor of the ice cream. Whatever you do, it is not Oreo flavored ice cream. It is vanilla or chocolate or whatever (and whatever brand ice cream you are using) flavored with or containing Oreo pieces.