Understanding Trademarks


The other day I got a cease and desist phone call and email from a long-ago infomercial guru who’d trademarked his name. He said I was using his “trademark” illegally and to remove it. Of course I was concerned, as I don’t make a habit of infringing on trademarks and don’t want to be sued. More than that I was confused and couldn’t figure out how I’d illegally used his trademark.

I went to the page in question on my website and his name was listed with several other infomercial gurus as an example. That’s it. I didn’t claim his works were mine or misuse his name. While I did remove his name because I didn’t want the hassle and it wouldn’t change the message of the page, he was wrong in accusing me of infringing on his trademark.

Trademark is used to protect your brand name, logo or slogan for use by other business, products or services, but it doesn’t prevent people from saying your trademark name. The Internet is littered with websites talking about, giving reviews, ranting and raving about products and services, most of which are trademarked. Sites like Yelp allow people to post comments, good and bad about companies, again many of which of are trademarked. But that isn’t infringement.

My writing about HP or Toshiba, doesn’t infringe on their trademarks because I’m referring to their brand/product specifically. The law even allows companies to mention other trademarked companies in advertising comparisons. Joy Wildes and Brook Singer’s article at FindLaw.com says:

Under U.S. law, use of a competitor’s trademark in accurate and non-deceptive comparative advertising is legal and does not constitute trademark infringement.

So, if I wanted to, I could compare what he does with what I do and as long as I was honest and depicted his trademark accurately. Of course, I wasn’t comparing this guy to anyone, I was simply referring to his products (you think he’d like that I was mentioning him). I used his trademarked name to refer to him specifically. How else can you talk about products and services if you can’t refer to them by name?

I believe his gripe was that his name was on the Work-At-Home Success Scam Alert page, although I wasn’t saying he was a scam. I fact, I said his and other infomerical products usually have good information, but that you can often get it cheaper searching online or buying a book. In this case, if I had all the time and money in the world, it might be fun to challenge his claim, but I don’t. I have better things to do, so I just removed it. But he’s going to be busy if he’s going to claim every site that has his name is infringing. I wonder if he’s going to sue Amazon.com or the person that left a comment there claiming he was a scam. Will he sue every site marketing his book through the Amazon Associate Program (if there are any)? What I find interesting is that he came after me when my comment was benign while there are thousands of websites online panning him. Did he contact them?

Let me end this by saying I’m not a lawyer and you should always consult a lawyer about intellectual property issues. It is important for you to understand trademark and copyright so that you don’t infringe on someone rights and to protect your own rights. I’ve unwittingly used a phrase I didn’t know was protected and immediately fixed it when I found out. I’ve had others steal my name, logo and content, making me the one sending the cease and desist letters. It may seem like a hassle, but a trademark is a brand that carries a reputation and because of that you need to know something about it.

You can check out my article Protect What’s Yours to learn more about intellectual property rights.

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