I have clients who operate websites that allow third-party content. While NOT my clients, think about sites like Yelp, Twitter, Glassdoor, or even Facebook as examples. When you operate websites that allow other people to go online and write whatever they want, chances are you are going to see an allegation of some variation of Trademark Infringement via a cease and desist letter. I typically see them in the context of someone alleging trademark or service mark infringement because someone is using the trademark to talk about them online – most often critically – but not always. Sometimes content creators are using a brand’s trademark to speak highly of the brand or explain how to use something. Either way, these cease and desist letters come in from attorneys (which I always raise an eyebrow at), reputation management companies (again which I raise an eyebrow at) and everyday people which I can better understand because many simply don’t have an understanding of this area of law.
Due to the overwhelming issues that I see with these cease and desist letters (or even a friendly, hey, could you not use our stuff), I thought it might be good to cover some basics:
What is the Purpose of Trademark Law?
Trademark law helps ensure that consumers can rely on various types of marks (trademark, service mark, etc.) to identify the source of goods or services by prohibiting competitors from using the marks in a way that would confuse consumers about the source, sponsorship, or affiliation of goods or services.
What is a Trademark?
A trademark is a word, name, symbol, or device, or any combination thereof, that is used to distinguish the goods of one person from goods that are manufactured or sold by others. Think of it as telling people the source of the goods or services. Think of “Pepsi” or “The Home Depot” for example. Those are trademarked words that clearly distinguishes them from other sources of goods like “Coca-Cola” or “Lowe’s.”
What is a Service mark?
A service mark, is essentially identical to a trademark, with the exception that the mark is used to identify and distinguish services rather than products. Think of the well known service marks of American Express or Southwest Airlines. These are services marks that clearly distinguish them from other service marks like Discover or American Airlines.
Protecting your Marks.
It is important to police your trademark so as to keep it from falling by the way of generocide (death by becoming too generic due to its popularity and/or significance) or being counterfeited (knock-offs). A common example of generocide includes trademarks like “escalator” for the moving staircases. If you are curious you can read more about generic trademarks. A common example of trademark counterfeiting includes the cheap knock-off/fake Louis Vuitton handbags. You know, the ones that look like it’s the real deal at first glance but any savvy fashionista knows better upon closer inspection.
Trying to use Trademark as a Reputation Management Method.
Yes, there are times when you should be policing your trademark as discussed above. However, just as I cannot talk about The Home Depot without saying “The Home Depot,” the same goes for anyone else wanting to talk (or write), good or bad, about a particular brand. Such use falls under what is called “nominative fair use” which applies when a person has used one’s trademark to describe or refer to the trademark holder’s product. As with most aspects of law there are caveats and tests, however, generally speaking, just because you have a registered trademark doesn’t mean that you can submit cease and desist letters and allege trademark infringement as a way to get websites/content creators to take down content about your business, especially if it is critical of your business. Chances are, in that critical context, it is NOT trademark infringement.
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