Our competitor started to use OurTrademark on links that lead to HIS site. i.e, he buys links with our name, and when you click, you reach his site. Is that deemed legal? Thanks!
Absolutely illegal. There is case law on this. Is your trademark registered? What exactly is he doing.
Unless he is explicitly using your trademark on his actual website, I doubt you could do much to stop him. Of course its bad he's using your trademark in his links but he's building up brand awareness for your product. Drop him an email and tell him to stop using your registered trademark, probably best to consult a lawyer on this but I dont think you can do much.
I'm sorry but I disagree with you here. You are not allowed to use trademarks that are owned by someone else for your own benefit unless you have the permission of the person who owns the trademark. As far as I am aware if you serve notice to the hosting service that the site is on the hosts may pull the whole site. i have absolutely no legal background but what would be the point of having a trademark registered if you can't protect it. I apologise if I am wrong but it would seem ludicrous to me if there was nothing that you can do.
Your competitor cannot use your trademark to drive traffic to their site. It's illegal profiteering through the misuse of your intellectual property - assuming you indeed have established trademark rights. The US has common law trademarks, which means you don't have to have a Federal or State registration, but it certainly will make it a lot easier to take action and prove your prior usage. If you have a Federal Registration that has uncontestable status, then your rights are cast in stone. If you don't you need to make sure you indeed have rights to the name. This usually means you must have been the first person to use the term, for this particular usage. It's common for people to use a particular name and assume that because they were using it before a newer website, they have rights to the name. Adsense.com is a good example of a business that started using a name that had been trademark years before them - and that is who google bought the rights from. The owners of adsense.com didn't have legal rights because someone else had used the name before them - so they can't demand someone stop using a name they never had rights to. Owning a domain name does not give you rights to use the name if it is infringing upon someone elses prior usage - a mistake many people make.
There is case law on the subject. The following are landmark cases, well known in the field, the decision and the complaint of Playboy v. Welles and Oppedahl & Larson v. Advanced Concepts. Using someone else's trademarks "invisibly" such as within meta tags is a trademark infringement. While the Welles case did not find infringement, it was because Welles had a right that others typically do not as you can read in this very interesting case. Others include: Playboy v. Calvin Designer Label Playboy vs. AsiaFocus and Internet Promotions Insituform Technologies Inc. v. National Envirotech Group, L.L.C. Brookfield Communications Inc. v. West Coast Entertainment Corp
I was working on the basis that these are incoming links only, if they are using meta tags or any references inside their actual website then you would have a case. Use some logic people, anyone can spam links around the internet, pointing from any site (within reason) - to any site. You cant sue someone on the basis that they have incoming links with your trademark in and they might not even be creating the links. I am not a lawyer but a bit of common sense tells you this.
Yes, true. But I was looking at the "use your trademark to drive traffic to their site" comment and the metatag cases are right on point. The original post stated: "Our competitor started to use OurTrademark on links that lead to HIS site. i.e, he buys links with our name, and when you click, you reach his site." Thus this means that the competitor bought the links which use the poster's trademark that link to the competitor's site. That is what the Oppedahl case dealt with, which is very interesting.
Clarification#1: They didn't use our existing links to lead to them; They've created links from other sites, to link to their site while the anchor text is our TM. Clarification #2: No Meta tags invloved.
I agree... it's much like the case of Domains being purchased with the term "MySpace" in them (I.E. http://everymyspace.com) and losing them due to Trademark issues.
Meta tags don't need to be involved. The point is that traffic is being directed to another site utilizing the trademark of another. If meta tags is a case of infringement then anchor text, which is visible, certainly is. The whole point of the metatags case was that it's one step further removed from the obvious issue of using someone else's trademark visibly. In that case it doesn't matter whether you are on the Internet or via another mechanism, e.g. print but the telephone number is for a competitor.
I think people get very confused due to the Internet being a different kind of medium than has ever existed before. I think of it in these terms. If I put an advert in a peper for my fast food burger restaurant and used the MacDonald's emblem in my advert I would be completely, and quite rightly , breaking the law because when people got there it would be Keith's Burger Joint, and not MacDonald's. The whole point is that I used somebody else's property (McDonald's emblem) which people associate with directly, for my personal gain to get people to Keith's Burger Joint. I apologise for the analogy but that is how I equate it. IMHO they are breaking the law and should desist from doing what they are doing. Slinky you are obviously very practised and knowledgable in this field and I completely understand what you are saying and trust that your comments are exactly right and unregistered, if it is affecting your business and you can prove that, I would go for their jugular. What they are doing is not right. You and your company work very hard to get a brand together, why should anyone else take advantage.
Yes, but what I am implying is, how do you know its them that created the links? It sounds far fetched but if another competitor wanted to cause trouble then they could easily follow tactics such as these. Unless they are specifically using the trademark on their website, how can you construct any case against them? We've established they arent using meta tags (inside the HTML content) and they arent using the trademark in the domain.
Yes I would be contacting the webmaster of the site where the links are, asking them who and how etc. the links were requested and informing them to be removed.
I've called the webmaster of the infringing company and ask him to stop due to a dilution of our TM. He also assured me HE will call/contact the two-tier webmasters and will guide them to change to some other compatible term. BTW, this discussion is very refreshing thanks to all the participants here!
Well done for your move. Let us know how you get on and if the call has made any difference. If they do not seem to be trying just contact the host and that will soon get their motor running when they get shut down. Good luck.
Thanks. That's very important. Also, it's a good idea to stop the cause, and not just the publisher. I will sure notify you guys! Cheers