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Local Company wants to sue for use of keywords
Can they do this?
lindavh

10+ Year Member



 
Msg#: 2149 posted 11:22 pm on Apr 7, 2003 (gmt 0)

I created a site for my brother for his <widget hire> service here in <widgetsville>. How much do I have to keep confidential (don't want to break any rules)?

Following the suggested use of keywords in title, description, keyword metas, and content on site (using the most popular search keywords at beginning of title as suggested), I received a call about 6 months ago from a local competitor saying that I was using their name and they were not happy about it.

Their company name happens to be the city name and service type (only not exactly, they use a plural (widgets) in their name.

I am in no way trying to advertise our site to represent or be associated with their company. We have a <long widget> service as well which is one of the top in the industry and have referred to that association in my site, as it is a well known company with a good reputation.

What is the limit on this...for using "city name and service type" in the title when used strictly for keyword visability? I even mention the name of our company in our title, although I hear that is not even a recommended practice unless your name is well known.

Please, if anyone has any experience in this area, I would appreciate some feedback.

I just received a letter from their attorney asking me to cease and disist my use of this. I can give details by email if needed, but want to remain in proper conduct with the forum rules.
Thought I'd ask my fellow webmasters before I respond to this.

Thank you, Linda

[edited by: Woz at 1:20 am (utc) on April 8, 2003]
[edit reason] Widgetized post to remove specifics. [/edit]

 

mivox

WebmasterWorld Senior Member mivox us a WebmasterWorld Top Contributor of All Time 10+ Year Member



 
Msg#: 2149 posted 11:36 pm on Apr 7, 2003 (gmt 0)

In my NON-professional opinion (as I am not a lawyer), I'd have to say that any Memphis-based Widget dealership would have every right to use "Memphis Widgets" in their keywords, even if one of the area competitiors used that as their business name. It's two 'generic' words (shoe=generic/Nike=non-generic ), combined in a generic way (Memphis widgets=generic/Memphis-Belle Widget Megastore=non-generic).

That said, it would be worth researching whether or not they have that phrase trademarked or something of the sort, as that would have an impact on the situation. If not, I'd say don't worry...

...but even if they don't have a legal leg to stand on, if they are willing to go to court anyway, it will cost you money to fight it off. Considering keyword meta-tags aren't heavily weighted with any of the major search engines these days, it may be a better choice for you to just delete your keyword meta-tags altogether and avoid the fight.

lindavh

10+ Year Member



 
Msg#: 2149 posted 12:10 am on Apr 8, 2003 (gmt 0)

Mivox,
Thank you for your response. I thought that using the keyword in your title tag was very important and have read many articles both in here and from newletters in SEO world that suggest using them in title, at beginning, and not even bother with name of company (although I use our company name in title as well).
Isn't this one of the areas where keywords should be used, in title, description and in content?
Thanks, Linda

Marcia

WebmasterWorld Senior Member marcia us a WebmasterWorld Top Contributor of All Time 10+ Year Member



 
Msg#: 2149 posted 12:12 am on Apr 8, 2003 (gmt 0)

Linda, anyone in the locale for any type of business can use the city name. Anyone who provides a service can use the generic for the term. It sounds like they want an exclusive for the use of the two together.

People know that others may not have funds to put up a fight, so they try to bully or bluff them. In your place I'd be inclined to have an attorney respond to their C&D. If it's worth optimizing for it must be worth business, so responding in kind with an attorney response would be worth what little it'll take and show them that you mean business also.

bird

WebmasterWorld Senior Member 10+ Year Member



 
Msg#: 2149 posted 12:20 am on Apr 8, 2003 (gmt 0)

Even if a company has registered a trademark as generic as "Memphis Widgets", that won't improve their standing in any way. Generic words (or generic combinations of generic words) are not legally protectable. The acceptance of such a trademark by the registration office is an error and will be corrected if someone complains through the right channels.

If their claim is actually based on such a trademark and you want to keep them from suing you, you could try to have the court void their mark preventively. Actually, you could just threaten to have their trademark voided in order to shut them up. Note that a valid (non-generic) trademark would be protected even without a registration, so you need to evaluate the situation carefully before proceeding in any direction.

And for this evaluation, you definitively need a trademark lawyer. Any opinion any of us can post here is just that, an opinion.

petertdavis

10+ Year Member



 
Msg#: 2149 posted 12:23 am on Apr 8, 2003 (gmt 0)

Is the word order important? Maybe you could just rearrange the wording.

Marcia

WebmasterWorld Senior Member marcia us a WebmasterWorld Top Contributor of All Time 10+ Year Member



 
Msg#: 2149 posted 12:28 am on Apr 8, 2003 (gmt 0)

Word order is important.

There's some interesting reading on trademarks at the Cornell University site, including case decisions:

[law.cornell.edu...]

It sounds kind of frivolous on their part. Imagine if only one company in a city could use a generic - like Los Angeles Ford Dealer.

[edited by: Marcia at 12:30 am (utc) on April 8, 2003]

lindavh

10+ Year Member



 
Msg#: 2149 posted 12:30 am on Apr 8, 2003 (gmt 0)

Thanks for the reponses and information. I don't believe that they have the name trademarked.

They are dba "city name / service type (plural)".

My site title is, "city name / (service type, {singular}) Service - Our company name "

I even have an introduction on our page going into detail about who we are and why we started this company as a sister company to our other service within the industry. It is very clear that I am not attempting to disquise who we are in trying to impersonate them in any way.

Can they trademark "city name, generic service"?

Thank you again. Linda

Marcia

WebmasterWorld Senior Member marcia us a WebmasterWorld Top Contributor of All Time 10+ Year Member



 
Msg#: 2149 posted 12:34 am on Apr 8, 2003 (gmt 0)

Linda, what bird posted covers that, though we're not attorneys and don't even begin to offer legal advice.

Think about it. Could someone legitimately trademark "California Flower Shop" and get away with it? How can someone "own" what's a common word in everyday usage?

Do a search for the full phrase in quotes and also, intitle:"exact city-name phrase-words" and see how many come up for that.

[edited by: Marcia at 12:37 am (utc) on April 8, 2003]

mivox

WebmasterWorld Senior Member mivox us a WebmasterWorld Top Contributor of All Time 10+ Year Member



 
Msg#: 2149 posted 12:35 am on Apr 8, 2003 (gmt 0)

I thought that using the keyword in your title tag was very important

Oh, yes... heheh. Yes, the Title tag is important. :) Apparently I'm feeling a little oblivious today, as I thought you were just talking about the keywords meta tag (which isn't that important). ::blush::

But I really don't think a "City Service" phrase can be legally defended the way they're trying to do it anyway, so if you think they'll actually take legal action, look up a trademark law firm in town, and have them draft a letter to your competitor informing them that the business name "City Service" is an un-protectable generic phrase and you will use it as you like, since it is a 100% relevant description of your business.

If you don't think they'll actually take you to court, you could probably also ignore them and be perfectly safe... or -- if you feel like being a PITA -- write them a letter saying you don't think they have a legal leg to stand on, but if they force you to hire legal representation to defend yourself anyway, you will see to it that they pay your legal fees for the trouble.

WebGuerrilla

WebmasterWorld Senior Member 10+ Year Member



 
Msg#: 2149 posted 12:40 am on Apr 8, 2003 (gmt 0)


Usual Disclaimer: I am not an IP attorney. I just hang out with some.

They are blowing hot air. IP firms regulary send out C & D's that they know they couldn't enforce in court. But many webmasters get scared and comply.

You are not using their exact company name, the words are generic, and most importantly, your site clearly indicates the name of your company. They would need to be able to make the case that consumers are being deceived into thinking you are the other company.

The best thing you can dso is stop communicating directly with the attorney, and then spend an hour talking to your own. Usually, a single call from your attorney will make it all go away.

A_Web_Guy

10+ Year Member



 
Msg#: 2149 posted 1:09 am on Apr 8, 2003 (gmt 0)

DISCLAIMER: I am not an attorney, and therefore offer no advice, but rather what I would do if it happened to me. :-)

I agree with just about everything said here, and would like to add to this with a very helpful site. It may help to become familiar with the US Patent and Trademark site at uspto.gov .

If I had a competitor send a C&D based on your stated circumstance, I think I'd buy a billboard across the street from them using the same title as your site. Trademarks are not, by design, susceptible to abuse.

If a competitor offered me a lawsuit of this sort, I would have a nasty surprise in my counterclaim.

If you can be bullied, you likely will be.

Mark

warlordbb

10+ Year Member



 
Msg#: 2149 posted 1:48 pm on Apr 8, 2003 (gmt 0)

I wanted to add our experience here just for kicks.

I am the webmaster for a company called Widgetville Wraps. We are a 27 year old brick and mortar paper goods company and have always put the TM after our business name. We registered the "Widgetville Wraps" with Widgetstate in 1998.

Recently we went to Google and typed in Widgetville Wraps. To our horror, we see 3 of our most rivalrous competitors, 2 Premium Ads and 1 Adwords. One of the Premiums even starts their ad text with "Widgetville Wraps" (I'm sure this is some type of automatic thing but still...).

Our owner was livid. None of these three competitors had anything to do with Widgetville, it was a clear cut case of them trying to capitalize on the work we had done to establish our name in the paper goods industry.

We immediately sicked our lawyers on them and Google and now, no more ads, except ours, show on "Widgetville Wraps".

Now, the BIG difference here is that both you and the other guy actually have a business in Widgetville.

pageoneresults

WebmasterWorld Senior Member pageoneresults us a WebmasterWorld Top Contributor of All Time 10+ Year Member



 
Msg#: 2149 posted 2:48 pm on Apr 8, 2003 (gmt 0)

But if they force you to hire legal representation to defend yourself anyway, you will see to it that they pay your legal fees for the trouble.

Hello lindavh. Some great replies in this thread. I would tend to agree with everyone and take mivoxs' advice. I've run into this same scenario in the past and each time it was a bluff. I knew from basic experience that the companies who filed the lawsuits did not have any legal grounds whatsoever. In both instances, my clients played the waiting game and never heard from them again.

It is a common ploy for companies to draft up a C&D letter to utilize as a scare tactic. It is not difficult to obtain a piece of letterhead from a company's law firm and draft up a bogus C&D.

I'd wait it out for a while and see what happens. I might even contact my attorney and explain to them what is transpiring and see what their advice is. Since I am personally familiar with your issue from your sticky, I see no legal grounds for a C&D. I am not an attorney, that is just a common sense response. Unfortunately when it comes to law, common sense may not apply.

All of the terms that I see in your title, description, etc. are generic terms that everyone is using. Heck, there are probably many other widget companies out there using the same terms. The competitor is upset because you are right there in the top spots under those terms. If we were all to play that game, our days would be spent fighting and issuing C&D's!

rogerd

WebmasterWorld Administrator rogerd us a WebmasterWorld Top Contributor of All Time 10+ Year Member



 
Msg#: 2149 posted 3:04 pm on Apr 8, 2003 (gmt 0)

It is not difficult to obtain a piece of letterhead from a company's law firm and draft up a bogus C&D

No need to do a bogus one, most law firms will write such a letter for a nominal fee. They may advise the client that the odds of prevailing are low, but that won't stop them from firing the initial salvo (and billing the client for an hour of time).

lindavh

10+ Year Member



 
Msg#: 2149 posted 4:48 pm on Apr 8, 2003 (gmt 0)

Thank you everyone for all your replies and support!

I will wait it out a bit and possibly contact our attorney letting her know of the letter we received.

My brother would like to draft a response to the attorney himself, but I think it might be better to have our attorney handle that if needed.

Thanks so much. This experience can be quite unpleasant even if it is bogus...these days people can create situations that no matter how frivolous, can cost you money just to defend your rights. Oh well....

You all are the best! Linda

eWhisper

WebmasterWorld Administrator ewhisper us a WebmasterWorld Top Contributor of All Time 10+ Year Member



 
Msg#: 2149 posted 5:04 pm on Apr 8, 2003 (gmt 0)

This thread seems to be done, but having been involved in a lawsuit about keywords, and i'm NOT a lawyer, only a witness who did a lot of research being the webmaster of the site in question, I thought I'd add the major word that the courts have focued on in these types of lawsuits.

Intent.

If your intent is to profit on someone else's work, or trademarked term, then it's illegal.

If your intent is to give information about the trademarked term, or fair use of a term, then it's legal.

A site that doesn't make any money, can use all the trademarked terms in it's keywords that it wants to as it's not profiting, but spreading information. (if the information is defamatory, then they might lose the lawsuit, be ordered to remove their keywords, but I've never seen a monetary award, only the removal of keywords).

If a site is profiting from the keywords in question, especially if there is no reason for them to use them but to capatalize on someone else's work, then their may be a monetary reward involved.

In this case, because the words could be copywrited, but also describe the other company in question, the odds heavily favor that if it went into a courtroom (as these usually do because judges don't understand the net enough yet to dismiss the case without some additional expert testimony) it would later be dismissed.

Repeat, I'm not a lawyer, but I've seen a few of these types of cases.

eWhisper

EliteWeb

WebmasterWorld Senior Member eliteweb us a WebmasterWorld Top Contributor of All Time 10+ Year Member



 
Msg#: 2149 posted 5:08 pm on Apr 8, 2003 (gmt 0)

The only time I've run into letters from lawyers is when a city wasn't really a city it was a planned community or something and the name of that place was TM and (c) they didnt want anyone using that word in their domain name. Received all the information about it, all the legal docs and such. If they dont own the city name then id dismis them. its like saying my company name is Las Vegas Copy Machines and you cant use those words. Id take em to court ;) and setup tons more sites using godaddy's private registration feature (:

MarketingPro

10+ Year Member



 
Msg#: 2149 posted 9:25 pm on Apr 8, 2003 (gmt 0)

This thread has some great information. And, on the same lines, I have a similiar question.

A client of mine (let's call him Joe Schmoe) was in the news with some rather negative press (e.g. a legal issue) about 3 years ago. There is someone in another state who has developed a "hate" website thereby pulling newspaper articles and other pulbicity, converting them into a PDF format and posting them on his website. And, in addition, has written several nasty editorials which he has posted on his site about Joe Schmoe as well as broadcast through various bulletin boards and listserves.

The legal issue is unrelated to my client's business, rather to him personally, and this "hate" website has impacted his business and reputation. His attorney has stated that the webmaster of the "hate" website can continue to post articles (even if they violate copyright) as well as provide an editiorial under freedom of speech. And, the attorney has advised my client to do nothing.

However, after three years, doing a search for "Joe Schmoe" (very well known in his field) results in several listings for gateway/doorway pages to the "hate" website and the actual "hate" website.

We've optimized his own series of sites, complained to the major search engines. For a brief period of time, the sites are pulled out of the directories, but then they reappear. Does anyone have any other suggestions?

JayC

WebmasterWorld Senior Member 10+ Year Member



 
Msg#: 2149 posted 9:39 pm on Apr 8, 2003 (gmt 0)

My brother would like to draft a response to the attorney himself, but I think it might be better to have our attorney handle that if needed.

Assuming it's a bluff, they'll be more likely to just go away if the response is from your attorney and directs that any further communication on the matter should to the law firm instead of to you.

bird

WebmasterWorld Senior Member 10+ Year Member



 
Msg#: 2149 posted 10:30 pm on Apr 8, 2003 (gmt 0)

They are dba "city name / service type (plural)".

My site title is, "city name / (service type, {singular}) Service - Our company name "

If you really have the same "/" as they have in there, you might want to do yourself a favour and get rid of it (eg. replace it with one of "-:*+"). They can't reserve the generic words for themselves, but they could theoretically try to trademark the visual appearance of how they write it, even if the "/" alone really doesn't provide enough distinction. But since it is primarily a visual element, using something else keeps you on the safe side. And marketingwise, you *want* to look different anyway.

lindavh

10+ Year Member



 
Msg#: 2149 posted 11:07 pm on Apr 8, 2003 (gmt 0)

Hi Bird,

Thanks for the email (and others too).
It's sometimes difficult to be exact in these forums without giving away too much, so I just used the "/" to separate the two terms; it is not actually used in the title.

Their company dba name is: "City Name Generic Service(s). This is not it, but let's say for comparison (although not the actual name),
"Los Angeles Vehicles".

We operate in that city name (exclusively) and provide that service (exclusively) as well.
And so my site Title is (for keyword optimization): "City Name Generic Service - Our Company Name"

In comparison to the example I used above:
"Los Angeles Vehicle Service - Our Company Name"

We are not trying to use their company name to misdirect or mislead. Their company dba name is "the city name and service type" and so they feel that no one in the city can use those words.

Those words allow us to describe our location and the service type, so how can they own that term. They are asking us to remove that term in our advertising and we are that term as well...it is a generic reference to the product and to the location.

There are several other people who sell that product in this city as well, use it in their desription, but apparently don't use those terms in the their title tag because they do not know that it is better than using your company name alone, which is unknown to someone looking in the search engines for a service within a city.

Just thought I'd clarify that we are using this generic term to identify our product and area of service, along with our company name. How can they tell us not to use that? It seems to go against everything I have been learning here about keyword use in title, description, metas, and content.

That IS our service and city, they just happened to name their company using those keyword terms and do not want others to use it. They are implying it is fraudulant and yet it is what we do.

Anyone curious can sticky me for the domains and you will understand why I asked the question here. I imagine many a webmaster SEO will use location and product type in their keywords, and if they choose to will use them at the head of their title tag for optimization purposes.

I don't mean to be repetitive, but some posts are asking if I am using this to use their "name" to my benefit...and that is not the "intent".

What's a girl to do?

mivox

WebmasterWorld Senior Member mivox us a WebmasterWorld Top Contributor of All Time 10+ Year Member



 
Msg#: 2149 posted 11:20 pm on Apr 8, 2003 (gmt 0)

What's a girl to do?

Simple. Like everyone who understood your original example has said, either...

1. Ignore them, and they'll probably go away.

or...

2. Get a lawyer to respond to their letter, telling them they have no legal leg to stand on, and they will end up paying your legal bill as well as their own if they try to pursue the matter.

bird

WebmasterWorld Senior Member 10+ Year Member



 
Msg#: 2149 posted 11:22 pm on Apr 8, 2003 (gmt 0)

What's a girl to do?

Stop worrying... ;)

I just wanted to point out that you may want to avoid any grapical similarities, because your made up example strings looked similar on a visual level besides the generic words.

If you get annoyed about it, then they have already won. If you want to do *something*, have your lawyer write them a nice letter telling them to get lost. Other than that, just keep minding your own business. You seem to be more successful than they are anyway, or they wouldn't feel pressed to try such stupid tactics.

Dennis Ottey

10+ Year Member



 
Msg#: 2149 posted 8:56 pm on Apr 11, 2003 (gmt 0)

We just had out attorneys send a C&D and we are livid that someone would take advantage of our work and optimize using out name. It is registered and we paid good money to protect the name.
As and example, I know of a billiard chain that uses "state" billiards. This is protected as a TM and is registered. If someone used my trade marked name in that order for any purpose, we would not only send a C&D, but would seek reparations for any money made as a result of the use of the name. This is not bullying, it is protecting our rights. If you think you might be infringing, then my advice is to do the right thing. If you don't think you are, sit tight and see if they are serious.
The best advice in this string is to check with an attorney. You may not be infringing. On the other hand, would you take medical advice from an internet e-mail string?

mivox

WebmasterWorld Senior Member mivox us a WebmasterWorld Top Contributor of All Time 10+ Year Member



 
Msg#: 2149 posted 9:05 pm on Apr 11, 2003 (gmt 0)

On the other hand, would you take medical advice from an internet e-mail string?

Well, I know I've gotten better veterinary advice online than I got at my own vet's office (a downside to owning "exotic" pets, I guess)... so if I were in a reputable medical forum populated by doctors and fellow patients dealing with the same condition I was seeking advice for, I certainly would.

Would I take the advice of WebmasterWorld members concerning an internet business issue? Absolutely.

It's not as hard to distinguish BS from reality online as some people make it out to be... you just have to use your common sense. ;)

lindavh

10+ Year Member



 
Msg#: 2149 posted 5:00 am on Apr 12, 2003 (gmt 0)

Thanks Mivox,

My thoughts exactly! In many ways.... :)

Actually, I did contact our attorney to handle the communication with their attorney as was advised in this forum by several members.

But noteably, my first action was to seek information here in WebmasterWorld from experts in the field of Internet issues and the members who may have had a similar experience for their feedback.

By the way, I mentioned my inquiries in the WebmasterWorld forums to our attorney and was asked to send a copy of the string by email.

I don't know about anyone else.... but I feel pretty fortunate about being in a forum that accepts all of my newbie questions, fears, outrage, and comments.... and still, without fail...they listen and give...and give...and give...

I am constantly "blown away" with this place....

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