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.
A couple of thoughts:
1. Albeit quite helpful to establishing a likelihood of confusion, the lack of actual confusion or deception is not dispositive in a trademark infringement case.
2. Although it’s not necessarily fatal, there is a legitimate concern over the genericizing of the “M&M” mark.
In other words, I can see why the cookie stand owner received the advice not to call the B&B cookies “M&M cookies.” Better safe than sorry, and ultimately their goal is just to sell the cookies.
Good points. I still think the nominative use defense is quite strong, and the likelihood of confusion extremely low. Your second point connects well with an earlier post of Mike’s regarding policing against genericide and whether that is alone sufficient to prevent someone from using your mark. See (https://madisoniannet.mystagingwebsite.com/archives/2005/09/09/attempted-genericide/).
It is interesting, and funny perhaps, that I was actually confused, not about source but instead about what it was that I was trying to purchase. And my guess is that I am not the only one, although it could be the case.
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