• We’re currently investigating an issue related to the forum theme and styling that is impacting page layout and visual formatting. The problem has been identified, and we are actively working on a resolution. There is no impact to user data or functionality, this is strictly a front-end display issue. We’ll post an update once the fix has been deployed. Thanks for your patience while we get this sorted.

Trademark Infringment?

C

CrazyDe1

Diamond Member
A particular online site has accused us of violating their trademarks by buying their a google adword. For example, we're selling books and we buy the term Amazon.

As far as I've seen on the web, there has been no legal precedent and all such previous cases have been settled out of court. What legal arguments do we have? We're not mentioning their services or saying we're affiliated with them in anyway.

The ironic thing is this same online company who sent us a legal notice bought an adword of their competitors that was trademarked...

Imagine Amazon sending us a letter saying we can't use their trademarked term by buying the adword Amazon then having one of their ads under the adword Barnes and Noble
 
Originally posted by: Yossarian
sadly I don't really understand what you're talking about.
Click to expand...

I thought it was simple.


It's like Chrysler buying "Ford" and having the google adword for it pointing to Chrysler's website.
 
Seems understandable to me... you couldn't put a listing in the phone book for Amazon that actually called your book shop instead, to use the same example.
 
Wish I knew the answer from my trademarks class. Alas, I took the exam yesterday and all the material has been selectively erased from my brain.
 
Originally posted by: Kenazo
Originally posted by: Yossarian
sadly I don't really understand what you're talking about.
Click to expand...

I thought it was simple.


It's like Chrysler buying "Ford" and having the google adword for it pointing to Chrysler's website.
Click to expand...

well I didn't know what it means to buy an adword and what that actually does.
 
The ironic thing is this same online company who sent us a legal notice bought an adword of their competitors that was trademarked...
Click to expand...
Be sure to document that.

Also, if this isn't just neffing, by "legal notice" to you mean something from a real law firm, or just a toothless email from the company itself?
 
Originally posted by: DaveSimmons
The ironic thing is this same online company who sent us a legal notice bought an adword of their competitors that was trademarked...
Click to expand...
Be sure to document that.

Also, if this isn't just neffing, by "legal notice" to you mean something from a real law firm, or just a toothless email from the company itself?
Click to expand...

We got a legal letter:

Re: Unlawful Bidding on XXXX trademark

To Whom It May Concern:

It has come to our attention that http://www.dsfdsf.com/, a website registered to you, is misusing trademarks identical or similar to those owned by xxx, Inc. in violation of the laws of the United States. Accordingly, we hereby demand that you immediately cease and desist these unlawful actions and take such actions as necessary to remedy this wrong. We are confident that we can resolve this matter short of litigation, but need immediate action on your part to put this matter to rest.

We understand that you are using or attempting to use xxx trademarks to divert consumers to your website(s). Specifically, we are aware that you are bidding for placement of your URLs in Google?s search results using keywords that comprise xxx?s trademarks or confusingly similar terms. You then link these URLs to your site. The result is that consumers searching for xxx?s services are directed to your site. These consumers are likely to mistakenly assume that there is a relationship between you and xxx. Such a practice amounts to trademark infringement. Even where such a consumer later comes to understand that you are not affiliated with xxx, this misrouting causes actionable initial interest confusion.

xxx owns rights to the xxx trademark in connection with various XXX services. xxx has registered the mark with the United States Patent and Trademark Office. Your purchase of search result placements based on these keywords amounts to unauthorized use of xxx intellectual property and constitutes violations of trademark and anti-dilution law as well as the law of unfair competition. Penalties for infringement and dilution include the recovery of money damages and profits, as well as injunctive relief, from anyone participating in this wrongful conduct.

In order to resolve this dispute short of litigation or any legal action, you must immediately take all necessary remedial actions, including, cease and desist from bidding on keywords comprising, in whole or in part, any xxx trademark including, but not limited to, xxx, as soon as possible but no later than April 29, 2005.
 
Originally posted by: Kenazo
Originally posted by: Yossarian
sadly I don't really understand what you're talking about.
Click to expand...

I thought it was simple.


It's like Chrysler buying "Ford" and having the google adword for it pointing to Chrysler's website.
Click to expand...

Unless there is more to google adwords than I know, this is wrong. It merely puts an ad up to the left when someone searches the term "amazon". This is much, much different than falsely representing yourself as amazon or misleading consumers to believe they are clicking a link to amazon. Unless you straight up say you are amazon or steal their trademarked materials, you can't be held liable.

Amazon my argue that having your page show up when you search "amazon" is like handing out fliers for your bookstore in front of a B&M store like Barnes and Noble, but this is entirely false and a misrepresentation of the limits of the internet. Last time I checked, amazon doesn't own the internet and they don't own google... so it's far from a situation of advertising on their property... it's more like putting up a billboard next to theirs or paying to put an ad in a phone directory next to their phone number.

Most likely any lawsuit is a result of a company realizing it's more cost effective to pay a legal team to file papers and such in an attempt to scare you out of using this ad than it is to let the business be taken by you.

Google, while accessable by the public, is not public property. They are allowed to bring about whatever search results they want for whatever reason they want without having to answer to anyone.

(But I'm not a lawyer, so don't quote me on that.)
 
Originally posted by: CrazyDe1
Originally posted by: DaveSimmons
The ironic thing is this same online company who sent us a legal notice bought an adword of their competitors that was trademarked...
Click to expand...
Be sure to document that.

Also, if this isn't just neffing, by "legal notice" to you mean something from a real law firm, or just a toothless email from the company itself?
Click to expand...

We got a legal letter:

Re: Unlawful Bidding on XXXX trademark

To Whom It May Concern:

It has come to our attention that http://www.dsfdsf.com/, a website registered to you, is misusing trademarks identical or similar to those owned by xxx, Inc. in violation of the laws of the United States. Accordingly, we hereby demand that you immediately cease and desist these unlawful actions and take such actions as necessary to remedy this wrong. We are confident that we can resolve this matter short of litigation, but need immediate action on your part to put this matter to rest.

We understand that you are using or attempting to use xxx trademarks to divert consumers to your website(s). Specifically, we are aware that you are bidding for placement of your URLs in Google?s search results using keywords that comprise xxx?s trademarks or confusingly similar terms. You then link these URLs to your site. The result is that consumers searching for xxx?s services are directed to your site. These consumers are likely to mistakenly assume that there is a relationship between you and xxx. Such a practice amounts to trademark infringement. Even where such a consumer later comes to understand that you are not affiliated with xxx, this misrouting causes actionable initial interest confusion.

xxx owns rights to the xxx trademark in connection with various XXX services. xxx has registered the mark with the United States Patent and Trademark Office. Your purchase of search result placements based on these keywords amounts to unauthorized use of xxx intellectual property and constitutes violations of trademark and anti-dilution law as well as the law of unfair competition. Penalties for infringement and dilution include the recovery of money damages and profits, as well as injunctive relief, from anyone participating in this wrongful conduct.

In order to resolve this dispute short of litigation or any legal action, you must immediately take all necessary remedial actions, including, cease and desist from bidding on keywords comprising, in whole or in part, any xxx trademark including, but not limited to, xxx, as soon as possible but no later than April 29, 2005.
Click to expand...

What a bunch of bullsh1t. Why aren't you releasing the name of the company? You could get some press from this and get the media and other people behind your cause.
 
Hmm, but was it from a real law firm or just the company?

I could write a legal notice requiring you to remove all dihydrogen monoxide from your premises by May 1, but it would be safe for you to ignore me 🙂

You might try Googling to see if they've threatened anyone else.

You might contact Google itself to see if they are interested in knowing that bidders are being threatened, since this affects their revenues.
 
Originally posted by: DaveSimmons
Hmm, but was it from a real law firm or just the company?

I could write a legal notice requiring you to remove all dihydrogen monoxide from your premises by May 1, but it would be safe for you to ignore me 🙂

You might try Googling to see if they've threatened anyone else.

You might contact Google itself to see if they are interested in knowing that bidders are being threatened, since this affects their revenues.
Click to expand...

It was from some lady who then signed it "Corporate Counsel"

She had an email address from the company's domain and not a law firm.
 
Like I said, Google and Google. Also google the "counsel"'s name + company, and email (as 2 searches) to see if she is really working in another position.
 
Originally posted by: DaveSimmons
Like I said, Google and Google. Also google the "counsel"'s name + company, and email (as 2 searches) to see if she is really working in another position.
Click to expand...

I did that almost right after I got the email...nothing comes up. It's interesting the letter was an attached word document was signed by someone different than who the email came from.
 
Originally posted by: CanOWorms
Can't you search for actual registered lawyers for each state?
Click to expand...
Good point -- it might even be a violation of their state's law to misrepresent oneself as a lawyer, then you can turn them in to the Attorney General's office for their state :evil:

The state's bar association might also be interested in protecting their monopoly on lawyerin' 🙂
 
My response:

Allen,

I believe these accusations to be false and incorrect. Specifically, the fifth part of the Lanham act which states that: "use of the mark is done in a manner that's likely to cause confusion." The use of the "xxx" adword does not cause confusion. Please see Judge Leonie Brinkema's ruling in Civil Action No. 1:04cv507 Geico Vs. Google filed in Alexandria, Va.

The point of a trademark is to avoid confusion when one company appears to be another or falsely misrepresents itself as another. We are not affiliated with nor use the terms "---" on our site. Trademark law does not dictate that a company has absolute control of a term.

Not only that, but "xxx.com" is engaging in the same practices which they are accusing us of engaging in. If you go to google.com and do a search for DDFDF.com a ---.com advertisement pops up. Not to mention that ---Corp which owns both --- and --- engages in these exact same practices with their ---.com brand name. I've attached screenshots of the a search I did using the "---" trademark.

Please advise.

Thanks,

ME
XXX Partners
VP Operations
XXX-XXX-XXXX
XXX-XXX-XXXX f



I know most of you think I'm stupid for doing this but I don't like letting people push me around. I'd rather fight back and deal with the consequences than be bullied.
 
Originally posted by: CrazyDe1
I know most of you think I'm stupid for doing this but I don't like letting people push me around. I'd rather fight back and deal with the consequences than be bullied.
Click to expand...
I'm like you, I'd rather spend money fighting than give in to strong-arm tactics.

In your shoes I would take the time to check that the "counsel" really is able to practice law in his/her state, and turn him/her in if not. People who threaten legal action to intimidate should be punished for it when possible.

And I would see if Google has any contact info so you could email them about it too. Who knows, they might have a legal defense fund, or might do something to discourage people like this. It's unlikely but it would be sweet irony if these kinds of threats cause Google to stop accepting bids from the company.
 
You must log in or register to reply here.

TRENDING THREADS

Back
Top