Branded products as ingredients

By Mark McKenna

Brett Frischmann tells a story about trying to buy his son a cookie with M&M’s on it and having the person working at the cookie stand insist on calling the cookies “B&B” cookies, not M&M cookies. According to the store clerk, they are not allowed to call the cookies M&M cookies.

Brett seems to think that the cookie stand owner has instructed its employees not to call the cookies M&M cookies on its own. I sort of doubt that, given the pervasiveness of the use of brand names to inform customers about the ingredients of their products. I can think of a number of food examples off the top of my head, such as Oreo cookie ice cream and Jack Daniels BBQ sauce. And what about all those ice cream shops where you can have ingredients added into your ice cream (like Marble Slab Creamery and Cold Stone Creamery)? They have a whole array of branded products that you can incorporate into their ice cream.

While my instinct was to agree with Brett that this should be a slam dunk nominative fair use case (assuming of course that the “B&Bs” really were M&Ms and not some other small coated chocolate candies that looked an awful lot like M&Ms), I’ll bet M&M Mars objected to their use. If I am wrong that the B&Bs really were M&Ms, then the objection might have been based on a legitimate concern about genericide – a concern that the cookie stand was calling all coated chocolate candies M&M’s, regardless of their source. This is exactly what gets Coca-Cola all worked up when someone calls any dark soda a “coke,” (which, my students remind me every semester, happens all the time).

But if the cookie stand really was using M&Ms on their cookies, then it’s a much different story. I’ve been wondering for some time how long it would take before trademark owners started objecting to people using their marks to note that they in fact make products containing the branded product, so I did a little research.

When I was in Ben & Jerry’s with my son the other day (Brett and I apparently have the same childcare priorities), I noticed that they don’t use “oreo” in the name of their “Sweet Cream & Cookies” ice cream, which are of course made with “broken chocolate sandwich cookies.” I also recalled that TGI Friday’s has several food items that are made with Jack Daniel’s bbq sauce, and I noticed that they say on their web page that they use “Jack Daniel’s” under license.

So, if this anecdotal evidence means anything, I’ll bet that the hapless cookie stand got a cease and desist letter from M&M Mars telling them they couldn’t say they were selling M&M cookies, when in fact they were. As I said before, I’ve thought this was coming for some time. Despite some half-hearted attempts to protect users who employ a trademark to accurately describe their products, we’ve gotten so far down the road towards rights in gross, that the M&M argument probably doesn’t seem far-fetched. M&M will argue that, when customers see “M&M cookies”, they will assume that M&M Mars has given permission to the store to use their mark. The only basis on which consumers could draw that conclusion, of course, is that the cookie stand is saying the cookies have M&Ms on them. But that would hardly make the case unwinnable for M&M. As Brett points out (by reference to Stacey Dogan and Mark Lemley’s article), we have other examples of areas where the only reason consumers might suspect some form of connection is the use of the mark by itself.

And the doctrine of exhaustion probably doesn’t work to block liability here. Exhaustion usually applies when someone resells a product without change. Here, the downstream users are not merely reselling initial products without changing them – they are incorporating them into their own food products, which may or may not be any good.

Still, if we mean it at all when we say that trademark rights are not rights in gross, then it can’t be trademark infringement to tell consumers that your product is made of ingredients that it is in fact made of. I certainly hope that nominative fair use would take care of this, because it if wouldn’t, then trademark owners in a very real sense get to control the use of their products after they’ve made their way into commerce.