Thursday, November 26, 2009

Trademark Infringement at Competitive Sites

While some usages of a competitor's mark are "fair use" these are limited in nature to comparative advertising. However, finding your brand or mark in use on the page of a third party site is more often direct infringement. The use is sometimes innocent, but nonetheless a threat to brand value, particularly if your mark is being used in a descriptive or generic manner, namely not as a trademark. These violations can be the most dangerous. If ignored, your brand can become generic or descriptive and cease to be protected as a mark.


1. Third Party Domains Containing Your Trademark. Use of your brand name as part of a different domain used to divert traffic is illegal. For example, a client owns the domain as well as the federal trademark for BURNED TOAST for a proprietary music library marketed to film and television producers and users of music. The domain has a parked page with a click through to a site offering to sell compilations of other musical groups. This is an infringement of rights in BURNED TOAST.

2. Typo squatting. Branditos deliberately register misspellings of other business brands and trademarks to divert traffic to pages filled with ads for other goods and services. One or two of these may seem harmless, but left unattended, they can mushroom out of control, causing loss of business and dilution of your brand.

3. Parked Pages and Pay Per Click Ads. Unused domains are often "parked" by domain registrants, as well as your own registrar. There is functional site, but the page is filled with ads and links to companies offering competing goods and services. Some even illegally use your mark on the pages.


If a competitor is coming up in the page ranking with your brand, right click on their web page and view the "meta data." You'll likely find your trademark being used by that competitor. Courts have held this practice illegal, since it is intentionally uses your mark to divert traffic to your competitor. The legal ease is "initial interest confusion."


The law is clear that purchase of your trademark by a competitor for sponsored ads is illegal. Not only is this illegal, it also drives up the cost of bidding on your own trademark, increasing marketing and advertising costs on the Internet. Auction of trademarks is now a common practice, and currently the subject of litigation as a result of the purchase of trademarks by competitors who place ads for competing goods and services next to your page ranking in search engines. For example, type in "XEROX Trademark" and you might well find Legal Zoom selling trademark filings services.


Original photographs, artwork, text, poems, excerpts from books, music and lyrics are all forms of copyrighted works which are vulnerable to attack from cybersquatters and the subject of infringing uses. Large Internet companies devour content at a rapid rate, and monetize their sites through advertising. Many users are honorable, but others do not want to pay for use of copyrighted works. Registration of important works is a must to preserve remedies.


Celebrities, authors and public figures have the right to control use of their name, image or likeness in connection with the sale or endorsement of products or services. Increasingly, successful authors and celebrities find their photos or names being used by competitors to sell products or other works. For example, one author may use the name of the author of a best selling self help book to "compare" or "imply and endorsement" by the more successful author. Instead of selling their product on its own merits, the infringer feels the need to use the name or likeness of the more successful client.

Copyright 2008 Hodgson Law Group
Cheryl L. Hodgson, J.D.
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