So I took my son shopping the other day. After an hour or two, he was near his limit, and we were on our way out when I saw a cookie shop. He saw it too. We immediately spotted his favorite, big cookies loaded with M&Ms. I asked the young lady working behind the counter for one M&M cookie. She responded, “you mean a B&B cookie?” I did not get it. Too much shopping, I guess. “No,” I said, “an M&M cookie, please.” Anyway, she then smiled and told me that they “can’t call ‘em M&M cookies.”
Since M&M was being used descriptively in an accurate way to refer to the use of actual M&Ms in the cookie, this seems like pretty straightforward case of nominative use. Cookies with M&Ms (rather than chocolate chips) are “M&M cookies”, right? Besides, it there really any likelihood of confusion? I don’t draw any sort of mental association between Mars (the M&M trademark owner), and the cookie or cookie shop; I don’t assume that Mars sponsors or endorses the cookie shop, and I suspect that no one does. [Do you?] [Then again, I have been surprised at how often, in the merchandising context for example, people assume trademark=property and therefore any use of the mark must be licensed. See Dogan & Lemley on this.]
While I was tempted to (1) give a trademark lesson and (2) even do my own little consumer survey there in the mall, my son just wanted to eat his cookie and go home. So a B&B cookie he got.