CheyTac® trademark legal opinion

Memorandum from the head of the Intellectual Property practice at the international law firm engaged by Peterson Cartridge to understand if CheyTac® the company can prevent anyone from using the name CheyTac®. This body of law falls under the heading of “Third-party trademarks” and “Nominative fair use.”

From our law firm to Peterson Cartridge:

This memo provides a summary of the basic principles for fair use of another party’s trademarks and offers suggestions for companies that make CheyTac® related products, your website, marketing materials, products and packaging.

Under the doctrine of “nominative fair use,” a business may refer to the trademark of another company provided that it follows certain guidelines.

Nominative fair use involves the use of another company’s trademark to refer to that company’s product or service. As an example, a mechanic who works on Toyota® vehicles may advertise that his shop repairs Toyotas, even though that term is a protected trademark of the car manufacturer. However, the mechanic’s use must be limited and cannot create the misleading impression that he is somehow affiliated with Toyota.

In evaluating nominative fair use, courts consider the following:

• Is the use of the trademark owner’s mark necessary to describe the defendant’s product or service?
• Is only so much of the trademark owner’s mark used as is necessary to describe the defendant’s product or service?
• Does the defendant’s conduct or language reflect the true and accurate relationship between the trademark owner and defendant’s product or service?

Put in practical terms: Do not use another company’s trademark unless it is necessary to refer to that company’s product by its trademark. Use it sparingly, in an inconspicuous manner – avoiding prominent placement, larger type or repeated references. Make clear that your company is not endorsed or sponsored by the trademark owner and there is no affiliation with the trademark owner.

Recommendations for your website:

Disclaimer

We recommend displaying a disclaimer on any webpage that references the CheyTac® mark. Suggested wording: CheyTac® is a registered trademark of CheyTac USA, LLC. Peterson Cartridge is not affiliated with, endorsed by or sponsored by CheyTac USA.

Avoid using CheyTac® in large type, at the top of the page, or in any manner that makes it appear that you are attempting to convey that you are CheyTac the Company.

Recommendations for your brochures:

Display the disclaimer on any page that references CheyTac®

Minimize references and consider using the format that you have adopted elsewhere, in which you cite the metric designation first, followed by CheyTac in parentheses, i.e. 9.5 x 77 (.375 CheyTac) or 10.36 x 77 (.408 CheyTac).

Recommendations for your packaging:

Include the disclaimer on boxes that contain goods related to CheyTac-caliber products.

Consider revising the labeling that refers to “.375 CheyTac” or “.408 CheyTac” to “For guns chambered in .375 CheyTac” or similar wording.

Recommendations for your goods:

If you need to stamp the caliber designation on your product, the safest approach is to use the metric designation.