Public Forums and Trademark usage

[cruizer]

I run a a public forum and have received a Trademark infringement notification because another product/trademark has been discussed on our forum.

The infringement demands that I not only delete the posts in question, but also that I undertake in writing never to use their trademark again.

Are any of these requests valid?

Also, some of the posts on the forum were made during a time when the company in question was advertising on our site. Don't know if that makes a difference.

The claimed trademarks (4 different) does not come op when I search for them on uspoto.gov
Are there other places they could be listed?

 

[Michael Wechsler]

Without seeing the post, I can't comment with 100% conviction. What is the source of their problem? How is a discussion of their product using the trademark to refer to the product constituting "infringement?"

It's possible they don't have a trademark and aren't happy that the posts may be denigrating. Frequently when companies want to remove negative publicity they will cite all types of legal rights they don't have in an effort to scare a website owner into removing the content. I can't say for sure that is the case here but it could be.

 

[cruizer]

I don't think they actually have trademarks, but they are considering them well-known marks, which I guess in US would be treated similar.

The thread starts with a question about if anybody has used this product/service and if it is a scam or not.

Some responding posts positive, others are saying it's a waste of money. Some post have more detailed review of the product.

 

[cruizer]

Here is part of their wording:

It has come to our attention that you are illegally using the above trademarks on your site regardless of whether or not is has been placed by you, your subsidiaries, affiliates, members, or customers. Further, it is a Trademark violation regardless of the anonymous nature of any / all posts or whether or not if you have a financial interest.

The use of these trademarks is confusingly and/or deceptively similar to the above-referenced trademarks, and also constitutes a reproduction or imitation thereof. Under the circumstances, your use of the above-referenced trademarks constitute an infringement of XXXXXXXX registered and common law rights.

Their product is just being discussed on our site, it is not like we are trying to market a product using their TM, so how can it be illegal or an infringement?

 

[Michael Wechsler]

I have no idea what they are talking about and this is only part of the whole letter (we may need to see more.) It seems like they may have copied the words off someone's cease and desist letter. A review of their product and using the name is not an infringement of trademark. I guessed that this is about bad reviews that might appear on your site and they want you to remove all of them, even though they have no authority to get you to remove them. From what you've written, they haven't stated how there is infringement, unless they were trying to say that the product on your site is a knock-off of the real product, although a discussion isn't trademark infringement either on your part.

 

[cruizer]

I am not too crazy about sharing the link on an open forum, especially if there are some legal implications. I have not posted enough to send messages. Is it possible to change this restriction?

 

[Michael Wechsler]

I am not too crazy about sharing the link on an open forum, especially if there are some legal implications. I have not posted enough to send messages. Is it possible to change this restriction?

You should be able to post the text of what you received without the identifying information. Permitting people here to provide legal analysis in private email broaches an area that we are not yet prepared to move towards yet at this point. In addition, many of our users become inundated with people trying to get free private reviews and are overwhelmed by these requests.

 

[cruizer]

Via Email And Certified Mail - Return Receipt Requested
X
X
X
X

Re: Notice Of Trademark Infringement & Removal Request
My File No. X

Dear X:

My name is X and I represent X. Please consider this X Trademark infringement notification and removal request.

We have been made aware that there are are at least three (3) of our protected business trademarks on your website, X as well as posted and run through your website on X and X Those were located at the following URL addresses:

X

and

X

and

X

X is the proprietor of the following trademarks:

(1) X
(2) X
(3) X
(4) X
(5) X

Details of these registrations are set out in accordance with U.S. trademark law.
Widespread use of the trademarks have been made, to the extent that these trademarkes have acquired an extensive reputation and goodwill. The trademarks are, accordingly, also well-known marks for all relevant purposes of trademark law.

It has come to our attention that you are illegally using the above trademarks on your site regardless of whether or not is has been placed by you, your subsidiaries, affiliates, members, or customers. Further, it is a Trademark violation regardless of the anonymous nature of any / all posts or whether or not if you have a financial interest.

The use of these trademarks is confusingly and/or deceptively similar to the above-referenced trademarks, and also constitutes a reproduction or imitation thereof. Under the circumstances, your use of the above-referenced trademarks constitute an infringement of X registered and common law rights.

Accordingly, we request that you immediately do the following:

1.Cease all use of the trademarks above. You may simply search your site for all trademarks, and delete all posts and comments (regardless of whether each such comment is positive or negative);

2.Deliver-up for destruction all material to which the above-referenced trademarks, or any other mark confusingly or deceptively similar to the above-referenced trademarks have been applied;

3.Withdraw, cancel and/or delete any corporate names, domain names, trademarks applications and/or trademark registrations for or including the above-referenced trademarks; and

4.Undertake, in writing, never in future to make any use of the above-referenced trademarks without prior written authority from X, whether within any corporate name, trading name, trading style, domain name or otherwise.

Please complete 1-4 above within ten (10) business days from the date of this letter. Failure to do so, may precipitate additional legal action.

This is written without prejudice to the rights of X, all of which are hereby expressly reserved.

Thank you in advance for your prompt response.


Sincerely,



X

 

[cruizer]

Any further comments after I posted the full letter?

 

[Michael Wechsler]

To me, and I have no idea of the use which is a critical issue here, it seems like a letter designed to scare you. My reason for this guess is because they haven't given you even one example of usage. They haven't even identified any infringing act, only that the trademark appears. If you are telling me that it's just discussion, you could write them back to make sure that what I'm guessing is correct - that they have failed to identify any example of infringement on the site. But I'd be wary of doing that without an attorney and would be careful, limiting it only to what I've mentioned.

Having a trademark appear alone is not infringement, as you've figured out. We can talk about Coca-Cola all day here and they cannot remove the word from our site just because they may not like what is being said (personally I prefer Coca-Cola, but that's another story. )

Just my impression...