Interoperability and other companies' trademarks

Question

Previously asked as, this question, but now he actually asked the question.

My company is building an application that interoperates with a packaged application that our customers own. We don't have a good relationship with the package's vendor; they basically see us as competitors and wish we would die in a fire. My business partners are edgy about this, and have been suggesting that I remove all references to this packaged application from the software's UI and documentation, because they think using its name opens us up to legal issues.

This is going to make both our software and our documentation look pretty dumb, and confusing besides. Our users work with Foo all day, they have been using Foo every day for years, and they are going to use our product to get data out of Foo. The button they push to do this should be labeled "Get data from Foo." If it's labeled "Get data from external application" (one serious proposal) they'll be able to figure it out, but why should we force our users to work that hard?

Additionally, there are other packages in our market that we're going to have to interoperate with, and it's going to become necessary for both the UI and the documentation to disambiguate between packages. This is going to be hard to do if we don't use their names.

On the other hand, I certainly don't want to give the impression that we've developed this application in some kind of joint venture with the other vendor, not least because their product is awful and I just don't want to be associated with it any more than necessary.

I see plenty of software out in the world that interoperates with (say) Microsoft Word, and that's not shy about using "Microsoft Word" to reference it. The software and documentation makes it clear that "Microsoft Word" is a trademark of Microsoft, and people move on.

What kind of experience do other people on SO have with issues like this?

Answer 1

I have run into this when my CAD/CAM application has to import or export from other CNC machines and software. My recommendation is that you build it with the idea that it is going to support other vendors from the get go. Then make foo the only option in a dropdown list or option text.

That why you can clearly show your boss the one and only place the name will be along with where the future expansion will go. There are going to have to be pretty paranoid not to go along with this.

Also try to use a different form of the Vendor's name. Like MS Word, or Word 2000,03,07, instead of the trademarked term.

The combination of these two should help matters.

Answer 2

One of the important things to remember about trademark infringement is the fair use exception. Fair use may be asserted on two grounds, either that the alleged infringer is using the mark to accurately describe an aspect of its products, or that the alleged infringer is using the mark to identify the mark owner.

In your situation, it seems that using their trademark accurately describes what your product does.

For example, if you go through your supermarket you'll notice that products are often labeled with "compare this to Tide" or something similar. This is one example of fair use.

Answer 3

Your relationship with the package's vendor not withstanding you could try asking them how they would like you to refer to their package. You never know.

Failing that I'd recommend getting the advice of a specialist IP lawyer.

Answer 4

A qualified IP lawyer will be able to answer this question for you in one meeting.

Answer 5

I would think you are safer using the actual trademarked term, per @Jordan L. Walbesser, rather than an approximation, per @RS Conley's answer.

If you make up your own term for the other product they can complain that you are creating confusion.