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  1. #1
    Member kmkimmo's Avatar
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    I was contacted by a company notifying me that content on one of my web pages is a trademark infringement. It's not a big deal to me, as this particular term is not a money-maker. However, I did think this might be an interesting topic for discussion.

    For the sake of discussion, lets say I promote home furnishings. And let's say that there is a page on my site called 'Rugs'. On that page, suppose I have a paragraph (including affiliate links to merchants) that discusses "Fluffy Rugs" in particular. On this page, my keywords, title and description all contain the term "fluffy rug". (Note: lowercase and NOT plural). I DO have the term "Fluffy Rugs" as the header in my paragraph.

    So, a company called "Fluffy Rugs, Inc." does indeed hold a registered trademark for the mark "FLUFFY RUGS" as 'drawn' in their trademark. Throughout fluffyrugs.com the company uses the mark as "Fluffy Rugs" with the registered trademark symbol.... but NOT "fluffy rugs" nor "fluffy rug".

    You with me so far...?

    SERPs for this particular term reveal no less than 13,000 results. The company is at number 1 in all the engines, I am at number 11 on one engine only. I get about 400 hits a month for this term, and maybe 1 sale a month. (There are DOZENS of affiliates that appear in the results using the exact term.)

    Keep in mind, I am using this term on my site to describe a particular type of rug, with maybe "Asian rugs", "kids rugs", "bath rugs", etc ALSO on this page. And this is just one page on my site.

    I did some trademark research and found a trademark overview paper on Harvard Law School's web site. I won't bore you with all the details, but basically

    "A descriptive mark is a mark that directly describes, rather than suggests, a characteristic or quality of the underlying product." Um, that would be 'fluffy'.

    AND

    "A descriptive mark acquires secondary meaning when the consuming public primarily associates that mark with a particular producer, rather than the underlying product...descriptive marks are not inherently distinctive and are protected only if they have acquired 'secondary meaning.' Descriptive marks must clear this additional hurdle because they are terms that are useful for describing the underlying product, and giving a particular manufacturer the exclusive right to use the term could confer an unfair advantage."

    Ok, so if Fluffy Rugs, Inc. is so well known that when someone says 'Hey I want to buy a fluffy rug', one immediately thinks of the company...then the mark has secondary meaning. (Coca-Cola, Dell, Microsoft) I have never heard of this company until now and a search on the company name reveals a whopping 39 results. So, don't think it has secondary meaning. This is important because......

    [Where is that yawn smilie when you need it?]

    "Defendants in a trademark infringement or dilution claim can assert basically two types of affirmative defense: fair use or parody. Fair use occurs when a descriptive mark is used in good faith for its primary, rather than secondary, meaning, and no consumer confusion is likely to result. Such a use is purely descriptive, and does not invoke the secondary meaning of the mark."

    Ah-ha is what I say. Fair use on my part.

    Again, not a big deal for me, but this was certainly an interesting research project. It's seems to me that if I am infringing, then what's to stop companies from registering tons of descriptive terms as trademarks????

    Sorry for the long post. I'd be interested in hearing your thoughts (or even past experiences) on the topic. And if anyone knows a direct link to search U.S. trademark law (not registrations) but law...let me know.



    PS - I don't sell rugs on my site.
    - I am not young enough to know everything

  2. #2
    Content $ Queen Ebudae's Avatar
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    Wondering if we got the same letter from the same company?

    You can do what I did - got to Amazon, they sell their stuff there. Put up a few Amazon links to said company. Make sure you make the wording difference in "fluffy rugs" with the Amazon links and "fluffy style rugs" by your other merchants.

    Write a letter and tell them if they have a problem with you promoting their products, to take it up with Amazon.

    Worked for me.
    Good Luck!
    Ebudae


  3. #3
    Member kmkimmo's Avatar
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    You may be on to something Ebudae. Amazon does sell their products. I am not an Amazon affiliate...YET.

    I may sign up just for grins.

    Thanks for the tip!
    - I am not young enough to know everything

  4. #4
    More Cheesier Than Ever Cheesehead's Avatar
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    If the term(s) in dispute are commonly used generic terms, they have little or no case - they have a "weak" trademark. You can't trademark use of the entire English language. This is why I stay away from nonsense domain names like qrst.com or piffy.com because these terms are not commonly used or used at all in the English language so hence they are "strong" trademarks. I don't really feel like doing a trademark $earch with an attorney so I pick generic (weak) words for domain names. Don't know your specifics, but my niece deals with such legal matters so we have discussed this.

    Consult an attorney for real advice. My advice is only worth what you paid me.
    This World is Not My Home
    We're gonna go inside, we're gonna go outside, inside and outside. . . And then we're gonna go go go and we're not gonna stop til we get across that goalline! Quotes from the movie Rudy, 1993

  5. #5
    Lite On The Do, Heavy On The Nuts Donuts's Avatar
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    And know if you have your sites hosted by others (instead of hosting yourself), they won't care to investigate or analyze an infringement claim - they'll just turn you off.

    Paying them $19 a month (for example), doesn't get you the resources you'd want.

    And most have procedures that essentially say to take your site live again, have the complaintant remove their complaint... and what's to make fluffy rugs do that... this was there purpose in writing you...

    Be careful if you are hosted by others. Who is right won't determine the results.

    Don't be a wimp - hire a lawyer if you've been harmed financially. But don't throw stones either.

  6. #6
    Member kmkimmo's Avatar
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    Cheese and Donuts - thanks for the advice. It's really not worth pursuing legally.

    It definitely is a weak trademark considering the above legal descriptions for the type of mark it is.

    I was absolutely sure that I wasn't the only one getting this letter from them, simply because of the SERPs that come up for the term.

    I have actually had a very polite email exchange with the company, asking them for more information regarding their claims...one of which is completely untrue. They have been very cooperative...so no desire to throw stones.

    The whole thing just seemed very interesting to me, and even somewhat silly at one point. But I understand "you gotta do what you gotta do" to protect company assets.
    - I am not young enough to know everything

  7. #7
    Troll Killer and best Snooper!
    I decide when the pigs fly!
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    Cheese and Donuts?

  8. #8
    Member kmkimmo's Avatar
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    LOL Rhea...I didn't think about that combo when I wrote that!

    NOT a good combination outside of ABW!
    - I am not young enough to know everything

  9. #9
    I like traffic lights
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    Be careful, they might send the Department of Homeland Security after you...

    http://news.yahoo.com/news?tmpl=stor...rity&printer=1

  10. #10
    Full Member Travelin Man's Avatar
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    KmKimmo,

    Sounds like you have handled things the right way. I can add I had a domain name that was in part trademarked by a very popular company. After more than 2 years their lawyers finally got after me. I suspected that would eventually happen. Shoot, it was just a small content site that only reflected highly on this company. Anyway I migrated to a new domain (one that won't get me in trouble). They were nice about it all and could have been asses. In my newbie days I didn't know better. Good Luck!

    Quote Drewbert:
    "Be careful, they might send the Department of Homeland Security after you..."

    As appose to NO or corrupt-on-the-take security in Mexico? I'll take our Homeland Security any day!
    Travelin' Man

    "If you don't know where you are going, any road will lead you there." -- unknown

  11. #11
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    I've just had listings removed from ebay for the word 'caution' in the t-shirt design.

    A guy in the USA trademarked the word and has been actively shutting down EVERYTHING that uses that word in one of it's designs.

    eBay will now end any listings he specifies without even looking at them due to this.

  12. #12
    Affiliate Miester my2cents's Avatar
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    <BLOCKQUOTE class="ip-ubbcode-quote"><font size="-1">quote:</font><HR>Originally posted by SamyT:
    I've just had listings removed from ebay for the word 'caution' in the t-shirt design.

    A guy in the USA trademarked the word and has been actively shutting down EVERYTHING that uses that word in one of it's designs.

    eBay will now end any listings he specifies without even looking at them due to this. <HR></BLOCKQUOTE>

    Eventually he will come across someone who will challennge him and he'll back off...

    Most of these infringement cases are brought on by bullies.. because they know the rank and file affiliate will comply rather the fight...

    I have been on both sides of this issue... I recently lost a domain because it was similar to a well known spammer... they sent there attorneis to harass my... to told them where to go.. so they sued..

    on the other side of the coin... I recently came across a merchant that occasionally posts here at ABW the is calling there company something very similar to the name of my company... in a confusing way... so you guessed it...

    My lawyers are getting busy to resolve this matter...

    I guess what i am saying this is all just part of being in business...

    Usually, it's just best to comply if the request is not totally unreasonable.. and you are asked in a polite way...

    JOooe
    ++++++++++++++++++++++++++++++++++++++++++
    that's my2cents, 'cuz I'm a legend in my own mind....

  13. #13
    Member kmkimmo's Avatar
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    All, thanks for the replies!

    Drewbert - that's a bit frightening. The small guy really doesn't have much of a chance in cases like these.

    SamyT - that's just ridiculous, sounds like a money hungry, law suit starting crazy is at work. But I think my2cents is right...eventually someone will defend an infringement and the mark will be challenged.

    It's too bad someone will have to spend money to challenge it though, seems like with a common word like that, it would be caught at the point of trademark registration!
    - I am not young enough to know everything

  14. #14
    http and a telephoto
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    The caution guy must have enough money to back himself up because he has wrecked havoc on many people and many sites for quite a while now. He has gone to court and won some cases.

    I don't have the references handy, but you could probably google for the details, the court cases have been documented on the web.
    Deborah Carney
    TeamLoxly.com BookGoodies.com ABCsPlus.com

  15. #15
    pph Expert! Gordon's Avatar
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    I was always under the impression that no one could trademark a word that is so commonly used like caution.

    What is to stop me from trademarking tea-pot, cup or bed? it just does not make sense to me.
    One day parasites and their ilk will be made illegal, I bet a few Lawyers will be pissed off when the day comes.
    Mr. Spitzer is fetching it nearer

    YouTrek

  16. #16
    http and a telephoto
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    The trademark is for using the word in an image on stuff, like t-shirts, posters, mugs, bumper stickers, etc. The court case has it all laid out. So, "Caution: ABWer Alert" in graphic form on a t-hirt would be an infringement.
    Deborah Carney
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  17. #17
    http and a telephoto
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    Here is a link to a domain arbitration that explains it somewhat and explains what exactly is trademarked in regards to the word caution:

    http://www.arbforum.com/domains/decisions/159460.htm
    Deborah Carney
    TeamLoxly.com BookGoodies.com ABCsPlus.com

  18. #18
    pph Expert! Gordon's Avatar
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    I'm not much good at reading legal jargon but it seems to me the caution guy lost this case

    right at the bottom it says
    <BLOCKQUOTE class="ip-ubbcode-quote"><font size="-1">quote:</font><HR> Based upon the foregoing, the Panel finds and determines that Complainant failed to demonstrate that the Respondent registered and is using <caution.com> in bad faith.

    DECISION

    Based upon the foregoing findings and discussion, the relief sought in the Complaint is DENIED. <HR></BLOCKQUOTE>
    One day parasites and their ilk will be made illegal, I bet a few Lawyers will be pissed off when the day comes.
    Mr. Spitzer is fetching it nearer

    YouTrek

  19. #19
    http and a telephoto
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    I get lost and my eyes glaze over when I get halfway through the page and I know he got a ton of images shut down and pulled off the market.
    Deborah Carney
    TeamLoxly.com BookGoodies.com ABCsPlus.com

  20. #20
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    That was at cafepress Deb, remember, they don't fight anything, they just PULL the images instead.

    He is trademarking 'approach with caution' and then he is going to get my design with that pulled too.

    In Australia, that trademark would never be allowed to happen. He could trademark a specific design with the word, but not the word as it appears on ANYTHING with a slogan on it.

    eBay is the same as CP, they just pull auctions rather than deal with it - he can end any auction he wants and they don't even LOOK at the auction to see if it breaches his rights (which mine didn't).

    Of course he's convinced himself that me having the word caution in one of my designs is the sole reason my cafepress store makes a fair bit of money - WHAT A JOKE. It's not even in the page title or the title of ANY of the products.

  21. #21
    Member kmkimmo's Avatar
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    [QUOTE]Originally posted by SamyT:

    He is trademarking 'approach with caution' and then he is going to get my design with that pulled too.
    [QUOTE]
    See, that is just silly to me. I can think of at least half a dozen legitimate uses of that phrase, road signs, signs at a zoo, hospitals, etc.

    Is this guy actually SELLING something, or just suing folks?
    - I am not young enough to know everything

  22. #22
    I like traffic lights
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    Gordon, you could TM 'caution" to use as a brand of deodorant or the name of an airline.

    You can't TM "tide" when talking about sea levels, but you sure can TM it as a laundry detergent.

  23. #23
    ABW Ambassador darkstar7's Avatar
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    Trademarking a common word is virtually impossible. Remember, the "Donald" (Trump) tried to trademark the term 'Your Fired' and got told he coouldn't do it.
    Luke
    Have you promoted your brand name today?

  24. #24
    I like traffic lights
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    Depends what class he tried to TM in it. If he did it in the boardgames class, I'm pretty sure he'd get it.

    Note that the word "sorry" is a TM.

  25. #25
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    On the internet, it doesn't matter if the person with the weak trademark wins that rare case of a challenge. What matter is that the litigant can can clear all the competition away from a lucrative keyword combination. Hmmm, that would be a good profession for a lawyer... SEO litigant

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