I don't want to share information regarding the specific site in question or trademarked term, but here are the basics: 1. The term is federally registered with the USPTO. 2. However, the term is generically descriptive (two generic terms actually). 3. I have a freely distributed document with a heading of "generic adjective describing generic noun." 4. That adjective is simply the best generic adjective to describe said noun. 5. Other than the document title (and I know titles cannot generally be trademarked), the issue is that I use the term when linking to the files. 6. Interestingly, the mentions cited are not identical to the trademark--in fact, in one of the two cases, it's a similar but entirely different noun as anyone in the industry knows. I don't intend to remove anything at this point in time. I just received a friendly email C&D from the trademark owner. My policy is not to respond directly unless I receive a formal C&D from an attorney, at which point in time I'd consider on its merits. In this case, I don't believe there to be any merits. I ran it quickly by a lawyer friend of mine who agreed on the surface that it didn't look like the complaint would hold much weight. I've also been compiling some case history for my records to review precedent. So far pretty much every case along these lines (good faith effort in the use, and used in a descriptive sense) have resulted in a loss for the plaintiff, so in that case I'm not too concerned. However, I'd like to keep accumulating as many of these records as possible for my notes, and was wondering if anyone here could point me to some documented case law about trademark fair use rights and descriptive use of the marks. If you know of any further resources I should take a look at, do let me know. Thanks!
Thanks. Unfortunately this isn't a case of them wanting a domain name from me, so a WIPO decision might not carry too much weight as far as a potential fair use defense if it comes to that. It may though. I'll bookmark it.
Generically descriptive for what, though? Tide, Shell and Head and Shoulders are generically descriptive for the waves, the mollusk and one who is above others, yet they're also marks for detergents, oil products and shampoo. Probably one "mistake" some people make is thinking words generic, dictionary words we use every day is so-called generically descriptive for any and all other uses. That simply isn't the case for especially commercially successful products using common words to distinctively identify themselves. Of course, I've seen lawyers argue to and fro about generic words and what- not. But the fact is generic words can become trademarks, especially depends how they're being used in their cases. Also, one lawyer told me titles can become trademarks if it's being used as a trademark or acquires "secondary meaning". Star Wars started out as a movie title until merchandise bearing its title is being sold consistently. While not to be necessarily considered authoritative, link below can give some ideas: http://www.copylaw.com/new_articles/trademrk.html#titles Finally, anyone can send a C&D whether it's a lawyer or not, although this will give the possibility that it could be without merit or even fake. But then, no law exists requiring C&Ds to be sent first without filing a dispute after. You can ignore the C&D, or even reply back based on what your lawyer said. There's various cases like lh.com and elephant.com at the top of my head for now, but it boils down to intended usage.
I do get the secondary meaning issue, but have also reviewed the cases so far demonstrating that a use in its normal descriptive sense doesn't necessarily violate the second acquired meaning of the trademark. When I say it's generic, I mean it's just flat out generic when used together. It's not an issue like Shell being used for gasoline, where the descriptive word otherwise wouldn't apply to the industry. While I don't want to give the specific publicly (waiting on a second lawyer's opinion to verify privately), it would be the equivalent of saying something like "one-coat paint" where "paint" is a generic noun, and "one-coat" is a pretty normal descriptive phrase that can be used as a simple adjective in good faith by pretty much anyone to describe that noun. I also dug a bit deeper into their actual trademark and service mark. Both as listed in the USPTO database are specifically related their services, whereas my use of the term is a generic title / description of a type of document (literally just calling it exactly what it is). Interestingly, while they have a book with the title that doesn't appear to be covered (which is the norm - other than extreme cases, like what you mentioned or Casablanca being the classic example given, titles of books and documents can't be trademarked). It's also worth noting that their mark is listed on the supplemental register, which in and of itself shows that the USPTO found it to be non-distinctive (the supplemental status gives the mark registrant more limited rights). Thanks for the link. I'll give it a look in the morning with fresh eyes.