E-Commerce Law

The Sky is Falling! New Facebook Usernames Will be the End of Trademark Protection as We Know It

In just over six hours, Facebook will begin permitting its users to obtain "vanity" URLs for their Facebook profiles.  According to the popular social networking site,

"The one place [on Facebook] where your identity wasn't reflected was in the Web address for your profile or the Facebook Pages you administer. The URL was just a randomly assigned number like "id=592952074." That soon will change.  We're planning to offer Facebook usernames to make it easier for people to find and connect with you. When your friends, family members or co-workers visit your profile or Pages on Facebook, they will be able to enter your username as part of the URL in their browser. This way people will have an easy-to-remember way to find you."

Facebook will begin permitting its users to obtain these new vanity URLs at 12:01 a.m. tomorrow.

According to PC World, "[v]anity URLs are becoming an important part of one's online social life, as it makes it easier for others to find you by just typing your name after the service's URL (i.e. http://www.twitter.com/pcworld)."  Twitter and LinkedIn have always offered plain-language user names and its become something that social networkers now expect.

Despite the ubiquity of vanity URLs, Facebook's announcement has apparently caused a number of law firms and news outlets to sound the trademark protection alarm.  (See here, here, here, here, and here). 

E-Commerce Law Briefs: Week of April 20, 2009

The Wikipedia Foundation has demanded that the artists responsible for Wikipedia Art surrender the domain name wikipediaart.org.  "Last February, [the artists], working with several collaborators, created a Wikipedia article and invited the general public to add to it, following Wikipedia’s standards of credibility and verifiability. The work was intended to comment on the nature of art and Wikipedia. [However, Wikipedia editors shut down the project]  within fifteen hours for being insufficiently 'encyclopaedic.'"  The artists obtained the domain name wikipediaart.org and created a website to document the project which the Foundation seeks to shut down because it uses the "Wikipedia" trademark.

The United States District Court for the Northern District of Texas has applied traditional contract principles to find that Blockbuster Online's website Terms and Conditions are unenforceable.  "The crux of the Plaintiffs’ arguments were that since Blockbuster reserved the right to modify the Terms and Conditions at their “sole discretion” at “any time” to be effective immediately on their site, the contract was thus illusory.  The Court found the contract was illusory because Blockbuster had the power to unilaterally change the contract whenever they wanted to do so. The only 'limit' was the new terms would not be effective until posted online."

"Worldwide visitors to Twitter.com increased 95 percent in the month of March from 9.8 million to 19.1 million."

Google has upgraded a little-used feature that permits users to create profile pages with their name, photo, contact information, and other information.

"In February, a Texas jury awarded Orix Capital Markets, LLC $12.5 million in damages in a defamation case involving statements published on the . . . 'gripe site' Predatorix.com."

"Students have suffered another defeat in their legal fight against the company that runs a plagiarism-detection tool popular among professors.  A federal appeals court last week affirmed a lower court’s decision that the Turnitin service does not violate the copyright of students, even though it stores digital copies of their essays in the database that the company uses to check works for academic dishonesty."  The copyright infringment suit was brought by two Mclean, Virginia high school students after Turnitin was hired by their school to catch cheaters.

E-Commerce Law Briefs is a weekly feature appearing on E-Commerce Law. Each weekend, E-Commerce Law Briefs will provide a brief summary and commentary on recent legal news affecting e-commerce businesses.

E-Commerce Law Briefs: Week of October 20, 2008

"American Airlines is suing Yahoo Inc. for trademark infringement, a case similar to one that the nation's largest airline settled this summer against Google, Inc.  American filed its lawsuit last week in U.S. District court in Fort Worth for unspecified damages, legal costs and money to run a "corrective" advertising campaign"

E-Commerce Law Briefs is a weekly feature appearing each Friday afternoon on E-Commerce Law. Each week, E-Commerce Law Briefs will provide a brief summary and commentary on recent legal news affecting e-commerce businesses.

1-800 Contacts Files Its Latest Keyword Advertising Suit in Utah

Yesterday, Eric Goldman posted that 1-800-Contacts has filed its latest keyword advertising suit in federal court in Utah.  The company is apparently hoping for better luck than it had in its earlier forays into trademark litigation. 

Google Trademark Attorneys Will Be Busy in 2008

Last year, we discussed the possible genericide of "Google" and the inconsistent approach taken by the company in protecting its mark.  Now, Carolyn Elefant (of My Shingle and Legal Blog Watch) notes the reported increase in the use of "Google" as a verb amongst news websites and passes on a prediction from Big Mouth Media:  Google's trademark attorneys will find themselves very busy this year. 

If so, we can look forward to many more letters like this one. 

No Bidders for Pony Express Marks

Update to Pony Express Marks Being Auctioned Online.

Last month we told you that  Pony Express Worldwide, LLC was auctioning off its rights to six trademarks, including PONY EXPRESS, THE PONY EXPRESS, and designs of the first pony express riders at ipauctions.com.  The auction was to occur from April 23-30, 2007.  Now, the auction is closed and it appears that no one was willing to come up with the required starting bid of $250,000.

Technorati Tags:  pony express, trademark

Court Holds that Purchase of Trademarked Keywords is a Use in Commerce Under the Lanham Act but No Confusion is Likely

On January 4, 2007, the United States District Court for the Eastern District of Pennsylvania issued its opinion granting the motion to dismiss filed in J.G. Wentworth v. Settlement Funding, LLC, 2007 WL 30115 (E.D. Pa. 2007). Plaintiff alleged causes of action for trademark infringement based upon Defendant’s use of Plaintiff’s trademarks in Google’s AdWords program and in the meta-tags for Defendant’s website. Defendant filed a motion to dismiss, arguing that Defendant’s use of the marks was not a "use in commerce" under the Lanham Act and challenging Plaintiff’s claim on "likelihood of confusion" grounds.

Use in Commerce

Defendant argued that the alleged use of the marks for the purpose of triggering Internet advertising through Google’s AdWords program amounted to the sort "pure machine-linking function," detailed in U-Haul Int’l, Inc. v. WhenU.com, Inc., 279 F.Supp.2d 723, 725-36 (E.D. Va. 2003), a non-trademark use of another’s mark that does not identify the source of a product. In rejecting this argument, the Court relied upon the decision in Buying for the Home, LLC v. Humble Abode, LLC, 2006 WL 3000459 (D.N.J. 2006) in which that court held that, though participation in the AdWords program is not a traditional "use in commerce," it still satisfies the Lanham Act’s "use" requirement.

The Court specifically rejected the Second Circuit’s holding that such use was "analogous to ‘an individual’s private thoughts about a trademark.’" See 1-800 Contacts, Inc. v. WhenU.com, Inc., 414 F.3d 400, 409 (2d Cir. 2005). Instead, the Court held that "[b]y establishing an opportunity to reach consumers via alleged purchase and/or use of a protected trademark, the defendant has crossed the line from internal use to use in commerce under the Lanham Act."

Likelihood of Confusion

The concept of "initial interest confusion" applies where similar marks allow the defendant to lure potential customers away from a producer by initially passing off its goods as those of the producer, even where confusion as to the source of the goods is ultimately dispelled. In keyword trademark cases, attorneys often rely upon an initial interest confusion theory to establish the likelihood of confusion element of a trademark infringement claim.

In J.G. Wentworth, the Court rejected the initial interest confusion argument, noting that "initial interest confusion must create in consumers confusion as to the source of the goods or services or a misunderstanding as to an association between the mark holder and the mark user." The Court held that, since the Defendant’s use of the Plaintiff’s marks in the AdWords program created "separate and distinct" links "on any of the search results pages in question, potential consumers have no opportunity to confuse defendant’s services, goods, advertisements, links or websites for those of plaintiff." After noting that "no reasonable factfinder could find a likelihood of confusion under the set of facts alleged by plaintiff," the Court granted the motion to dismiss.

For more information on trademark infringement claims based upon keyword advertising programs, see Jonathan D. Frieden and Sean Patrick Roche, E-Commerce: Legal Issues of the Online Retailer in Virginia, 13 RICH. J.L. & TECH. 5 (2006), http://law.richmond.edu/jolt/v13i2/article5.pdf.

Technorati Tags:  Google, keyword advertising, trademark infringement

Maybe Google’s Not Concerned About Genericide Afterall

In The Genericide of Google, E-Commerce Law commented upon the addition of the word "google" to the Merriam-Webster's Collegiate Dictionary and how that addition must be a cause of concern amongst Google’s attorneys.

Now we’re not sure what to think.

It seems that Google has taken somewhat inconsistent approaches to protecting the "Google" trademark from genericide.

It should not surprise readers that a print dictionary was not the first to contain an entry for "google" as a verb. Word Spy and dictionary.com both have entries for "google" as a verb that are similar to the entry we commented upon last month. After Word Spy’s entry was made public in 2003,

"Google lawyers sent the site's editor a letter (portions of which were later posted to an online discussion board) saying that it wants ‘to make sure that when people use 'Google,' they are referring to the services our company provides and not to Internet searching in general.’"

Protecting Google Brand "Tricky Business" at boston.internet.com. The letter sent to Word Spy must have been very similar to the "genericide protection" letter described by former Google employees on Xooglers.

Years after reminding Word Spy of the "appropriate" use of the word "google," Google permitted Pontiac to run television commercials in which the term was used "inappropriately." A voice over for the 30-second ad says, "Don't take our word for it, Google 'Pontiac' to find out!" It doesn’t appear that Pontiac received the standard "genericide protection" letter; in fact, Google indicated that it was pleased with the commercial, saying,

"We are happy that Pontiac has featured Google search in their television ad campaign. This is evidence that mainstream brand advertisers are increasingly realizing the close relationship between broadcast advertising and search usage."

Genericide Unsweated at Google? on Language Log.

Now, after the addition of "google" to the Merriam-Webster's Collegiate Dictionary was reported by the Washington Post, Google has again delivered its standard "genericide protection" letter. In an article published yesterday, Frank Ahearns, a Washington Post reporter, says

"Google, evidently, took offense to this passage in last month's article: "Google, the word, now takes its place alongside the handful of proper nouns that have moved beyond a particular product to become descriptors of an entire sector -- generic trademarks.’"

Based upon the description contained in the article, Ahearns must have received a letter very similar to the one sent to Word Spy.

Sending "genericide protection" letters or taking out "genericide protection" advertisements, educating the media and the consuming public on the appropriate use of a trademark, is a sound practice for a trademark holder concerned about losing distinctiveness and value in a particular mark. To be effective, however, such a strategy must be consistently applied. The trademark holder cannot caution some parties about "inappropriate" uses of the mark while permitting, or encouraging, the mark’s misuse by others.

For more information, see Protecting Google Brand "Tricky Business" on boston.internet.com; Genericide Unsweated at Google? on Language Log; and So Google is No Brand X, But What is Genericide? in the Washington Post.

Technorati Tags:  trademark, google

Avoiding Trademark Genericide

Recently, this site commented upon the potential "genericide" of the "Google" trademark, as reflected by the inclusion of the term "google" as a verb in the latest edition of Merriam-Webster’s Collegiate Dictionary. This case should remind trademark owners of the importance of establishing trademark usage guidelines designed to protect the distinctiveness and value of the subject marks.

To avoid the genericide of a specific trademark, a company should:

• Create a trademark and a generic name for new and unfamiliar products. The product many people refer to as a "Band-Aid" is actually correctly described as an "adhesive bandage." "Band-Aid" is a trademark which identifies the source of the particular "adhesive bandage," while "adhesive bandage" is the generic name of the product. Many companies may be able to produce and sell adhesive bandages but only the owner of the "Band-Aid" trademark may produce and sell "Band-Aids."

• Always use the generic name for a product with the trademark. The owner of the "band-aid" trademark refers, and should insist that others refer, to its product as Band-Aid brand adhesive bandages." Consistent use of the trademark or "brand" identifier with the generic name of the product is an effective means of avoiding the effects of genericide.

• Educate consumers and the media on the correct use of the trademark. The trademark owner may wish to use letters or advertisements to educate consumers and the media on the correct use of the trademark and how the trademark is distinguishable from the generic name for the subject product. According to Xooglers, Google has previously attempted to promote the proper usage of the "Google" trademark by running advertisements which described the proper use of the term "Google" ("Please use Google to find it, but not to describe what you did.") and providing examples of proper and improper uses of the mark.

• Aggressively enforce its trademark rights. It is not uncommon for an occasional misuse of a trademark to grow into a systematic use which threatens the distinctiveness and value of the mark. Though litigation is certainly not called for in every case, a trademark owner must actively and aggressively police the use of its mark to protect its value.

As always, readers interested in drafting appropriate trademark usage guidelines should seek the advice of a competent and properly-license attorney. Failure to do so may result in the creation of guidelines which, even if followed, do nothing to protect the subject marks.

Technorati Tags:  trademark, google

The Genericide of Google

Lawyers at Google are probably not jumping for joy over news this week that the term "google" has been added to the latest edition of Merriam-Webster's Collegiate Dictionary.

Certainly, the word was added to the dictionary in recognition of the ubiquity of the Internet search giant and the adoption of the term as a verb by the consuming public. It is now commonplace to hear one’s acquaintances, and characters in television shows and movies, describe "googling" a person or thing.

Unfortunately, the public’s adoption of the term "google" as a verb may destroy the value of "Google" as a trademark. Trademarks serve as a designator of the source or sponsorship of goods or services. The greatest protection is afforded to trademarks which are highly distinctive and, therefore, highly effective at serving that purpose.

Though "Google" may have begun as a highly distinctive trademark, having been registered as a result of a misspelling of the word "googol" by the company’s founders, it may be losing its distinctiveness. As the United States Court of Appeals for the Fourth Circuit said in America Online, Inc. v. AT&T Corp., 243 F.3d 812 (2001):

"[E]ven when created words for new products have become strong marks, the public’s pervasive use of these marks sometimes creates a real risk that their distinctiveness will disappear, a process Professor [J. Thomas] McCarthy terms ‘genericide’ . . . ."

Earlier trademarks "Thermos," "Aspirin," "Cellophane," "Escalator," "FedEx," and "Xerox" have all succumbed to genericide and, if the new dictionary entry is any indication, "Google" may be following suit.

It appears that Merriam-Webster's Collegiate Dictionary has attempted to provide the "Google" trademark some protection by making the entry for "google" lowercase and defining the term as "to use the Google search engine" to find information on the Internet. If the public’s adoption of the term is truly limited to usage in the context of searches through the Google site, it may not represent the genericide of the trademark. The "Google" trademark would be most at risk where the term "google" was adopted as a generic verb for the act of searching using any Internet search engine (i.e. "I googled him at yahoo.com.").

We’ll only know for certain if a court is asked to opine as to the "Google" trademark but, as Professor Goldman suggested on his Technology & Marketing Law Blog, it certainly must be of some concern to Google.

Next week, we’ll post some ideas on how companies can preserve the trademark significance of their marks and avoid succumbing to genericide.

For more on the addition of the term "google" to the latest edition of Merriam-Webster's Collegiate Dictionary, see Brin, Page See 'Google' Take Its Place in Dictionary on forbes.com and 'Google,' 'Unibrow' Added to Dictionary and goo·gle (goo'-gul) on washingtonpost.com.

Update (7/22/2006):  For additional commentary, see This word just in . . . on Xooglers.

Technorati Tags:  trademark, google