Corporation stole my Trademark!

how to go about telling them to stop

[sundaridevi]

A few years ago my company was running a travel magazine, published for a major tourist destintion city in Europe. We posted all the articles online on our website, so you could read the magazine online. Although the magazine hasn't been published for over 5 years now, we still have the archives online and they generate a good deal of traffic to the website.

However, I recently discovered that a major travel publisher (probably one of the top 3 travel guide brand names worldwide) has just launched an e--travel guide series for smart phones and for the city in question, the name of the travel guide is exactly the same as the name of our magazine. Although we never trademarked the name of the magazine (i.e. we don't have a registered trademark), we have a trademark due to the fact that we operated under the name for so long and the risk of confusion between their product and ours is enormous.

Does anybody have any experience in this? If I contact them they will have to respond. Just wanted to hear if anybody has any experience with this before I call in the legal counsel.

[toplisek]

Imagine that Google stopped working. Will be content secured 100 years? I'm not sure but author is protected but not know-how.

1. Check example:
[open.salon.com...]

2. Check China developement. It is in people nature to learn.

[tangor]

Trademark or Patentmark is not the same as Copyright. We are not lawyers and cannot give legal advice. Suggest you contact an attorney versed in Intellectual Properties and see if there is any remedy for you.

[sundaridevi]

Trademark or Patentmark is not the same as Copyright. We are not lawyers and cannot give legal advice. Suggest you contact an attorney versed in Intellectual Properties and see if there is any remedy for you.

I guess that means this is the wrong forum? Trademarks are much more simple than copyright. I just wanted to know if anybody had seen something similar before I pay. I actually did send a short message to an IP lawyer that worked for us before and his quick answer was, "what would you like to see happen?".

My opinion is that in this kind of case they have to settle, since the violation is clear. So we'll see...

[jecasc]

Trademarks may expire when not actively used so the question is if keeping an online archive only qualifies as use - ask a lawyer. I have my doubts. Also there are different categories for trademarks. If you have a case also depends not only on how long the trademark was used but also where it was used and on the market penetration of the trademark. If you had a magazine with 5000 local readers things are different than with a magazine of 500.000 readers nationwide. You would certainly have a better case if you had registered the trademark or would still be actively using it. Ask a lawyer, give him all the details.

[tangor]

I guess that means this is the wrong forum? Trademarks are much more simple than copyright.

Actually the reverse is true. Trademarks have to be registered (and usually have a term limit and fee applied). If RENEWED on regular basis, Trademarks can be forever. However, failure to renew (or never having registered) pretty much cuts one off at the knees. Again, consult an attorney... and be sure to let him know the "trademark" was never registered.

Edit (added): Copyright exists in final form, whatever that may be, and does not require registration (in the USA and probably a few other countries as well), though registration may be beneficial in showing when such copyright was created.

[sundaridevi]

This is definitely the wrong forum!

I guess I should have said that both countries involved are American companies, because the most relevant question regarding Trademarks is "what country are we talking about", because it differs. Although on the internet I would bet it is easy to claim American law is operational.

Almost everything that has been stated in the last two comments is inaccurate under US law, so if you're really interested check here:

[chillingeffects.org...]

I am more or less up to speed on the legal side, as I've worked with lawyers in making sure IP rights were all covered on a number of commercial products. Here I'm just trying to craft the strategy because I can't believe this company didn't do its Due Diligence.

[tangor]

This is the correct forum for questions like this. For US Trademark law see: [uspto.gov...] (official source)

We do not want to give BAD information thus the careful questioning. But there is a difference between Trademark and Copyright and it is best not to CONFUSE other readers of this forum as to how either operates.

"Tarzan" for example, is a TRADEMARK, "Tarzan of the Apes" (the book) is a copyrighted material (though that copyright has expired and the text is now in the Public Domain). chillingeffects is not the best source for copyright or trademark arguments.

[tangor]

Followup... a short article that is helpful in explaining differences between Copyright, Trademark and Patent. [lawmart.com...]

[sundaridevi]

This is the correct forum for questions like this. For US Trademark law see: [uspto.gov...] (official source)

We do not want to give BAD information thus the careful questioning. But there is a difference between Trademark and Copyright and it is best not to CONFUSE other readers of this forum as to how either operates.

"Tarzan" for example, is a TRADEMARK, "Tarzan of the Apes" (the book) is a copyrighted material (though that copyright has expired and the text is now in the Public Domain). chillingeffects is not the best source for copyright or trademark arguments.

Thanks for the help anyway then!

Actually Chilling Effects is quite useful for laypeople who are unfamiliar with legal issues. Most people have a very hard time reading through and understanding the texts of IP laws.

By saying that Copyright is simpler than Trademark I just wanted to say that I thought that guys with an expertise in copyright issues here should be able to help me out, even though this is the ...Copyright... Forum

US Copyright law has changed 5 times since 1976 and depending on what year your work was published different rules apply. To the best of my knowledge Trademark law has not changed during that time. And what is Public Domain is not copyrighted by definition. Trivia for the day

[tangor]

Happy to talk about copyright all day long... the title of this thread does not mention "copyright"... it mentions "trademark"... and these are similar, but quite different under the law. Sounds like you're moving toward a copyright claim, and that might be the best method since Trademark does require that one has been taken out and has been properly maintained. Copyright is much simpler and, even though US copyright law has changed over the years, US is also (now) a signatory to the Berne Convention which includes many aspects of European copyright law as well.

Let us know how you make out!

Public Domain is a matter of Elapsed Copyright, thus is part of copyright law, else we'd never know what was in the Public Domain.

[buckworks]

Do some digging in the United States Patent and Trademark Office site:

[uspto.gov...]

That might help you craft better questions to ask your lawyer.

[sundaridevi]

This link looks pretty good, [uspto.gov...]

Thanks.

Otherwise, interesting comments I get here

Sounds like you're moving toward a copyright claim, and that might be the best method since Trademark does require that one has been taken out and has been properly maintained...Public Domain is a matter of Elapsed Copyright, thus is part of copyright law, else we'd never know what was in the Public Domain.

We have no copyright on the name.

There are cases where works are instantly released into the public domain upon publication without ever having had copyright protection. Consider the movie, "Night of the Living Dead"...an interesting case study for you.

Thank you for your assistance.

[tangor]

This link looks pretty good, [uspto.gov...]

Suggested it quite a bit earlier in the thread. And it is a "pretty good" source for US Patent and Trademark law. :)

There are cases where works are instantly released into the public domain upon publication without ever having had copyright protection. Consider the movie, "Night of the Living Dead"...an interesting case study for you.

A misstatement in that any release to Public Domain is a declaration of Copyright (or lack of) by the creator's intent. Again, we are not lawyers, but we do try our best to NOT muddy the waters by misconception or ignorance.

[jecasc]

Actually the reverse is true. Trademarks have to be registered (and usually have a term limit and fee applied).

This is not entirely true. That's the difference between:
™ for an unregistered trade mark
® for a registered trademark

You do not have to register to have a trademark. You can either obtain a trademark by registration or by proper use in the market place. That's what I meant in my post above. If he had registered the trademark nationwide it would only be a question of category and paying renewal fees. But since he has not registered it it is also a question of marketplace and market penetration. If you are "Joey's Widgetbox"™ in a 2000 people town in Oregon and someone uses the same name in New York there is not much you can do about that. Different marketplace. However if you are "Joey's Widgetbox"™ nationwide you might have a case. Also if you haven't used your TM for some time it may become abandoned. So if he has a case depends on many factors and can't be answered in a forum like this. Nothing easy about trademark law.

[sundaridevi]

There are cases where works are instantly released into the public domain upon publication without ever having had copyright protection. Consider the movie, "Night of the Living Dead"...an interesting case study for you.

A misstatement in that any release to Public Domain is a declaration of Copyright (or lack of) by the creator's intent. Again, we are not lawyers, but we do try our best to NOT muddy the waters by misconception or ignorance.

Whatever ...your statement is highly inaccurate. The cases I refer to all happened before 1976 during which time publishing certain types of works without a valid copyright notice released them instantly into the Public Domain. The specific case is a film released without a copyright notice, with the result that as soon as it was placed into distribution, it lost all copyright protection, under Common Law or Statutory Law and it became public domain. This law stood until 1977, at which time a Work was granted a 5 year grace period to affix a notice to the work in cases where it was previously omitted. After the 1989 update of the US Copyright Law, a notice was no longer obligatory for this type of Work.

It is of use to nobody to defend your position with half-facts while stating that misleading statements "muddy the waters".

Your statement that a Work can only fall into the Public Domain by creator's intent leads me to believe that your entire conception of copyright law is based on the current US law, which only applies to Works released since 1989. In fact, the great body of Public Domain works in the USA were published before 1964, because prior to that date a Work needed to have its copyright registration renewed in order to obtain an additional period of protection. In the event that this didn't happen, the work fell into the Public Domain.

Since on the internet many Works are now being digitized, that were created long before that date, anybody who happened to follow your advice would end up highly disinformed and at risk of being in copyright violation. Moreover, names cannot in most cases be copyrighted, although you seem to think they can.

In the interests of saving your time, I refer you to another US government website:
[copyright.gov...]

Where it is stated:

How do I copyright a name, title, slogan or logo?
Copyright does not protect names, titles, slogans, or short phrases. In some cases, these things may be protected as trademarks.

[edited by: sundaridevi at 9:46 am (utc) on Apr 20, 2011]

[tangor]

Thanks for finally agreeing to what has already been said.... As for USA copyright... public domain these days breaks at 1924. Meanwhile, works CAN be expressly released to Public Domain by the creator if desired... and that option has always existed under any version of copyright law.

So, tell us, are you going after a Trademark or a Copyright? Are you going to protect it, or make enough noise they pay you off? However you go, good luck!

[sundaridevi]

But since he has not registered it it is also a question of marketplace and market penetration. If you are "Joey's Widgetbox"™ in a 2000 people town in Oregon and someone uses the same name in New York there is not much you can do about that. Different marketplace. However if you are "Joey's Widgetbox"™ nationwide you might have a case. Also if you haven't used your TM for some time it may become abandoned. So if he has a case depends on many factors and can't be answered in a forum like this. Nothing easy about trademark law.

I agree with you, however, on the internet things change a bit. It's not like because a page on your website was authored 5 years ago, it is no longer in use. It is and it gets traffic and that has value. In this case there is an extreme likelihood of confusion, as the pages are in use, have high traffic, are in some cases reference works as interviews with international celebrities, most of which if you google "celebrityname interview" will come out number one.

That's why I wanted to know if anybody had experience with this. From a corporate point of view the offender should logically decide that the actual lost value to the owner due to the violation is less important than its costs to defend itself. So now, off to the lawyer.

[sundaridevi]

Thanks for finally agreeing to what has already been said.... As for USA copyright... public domain these days breaks at 1924. Meanwhile, works CAN be expressly released to Public Domain by the creator if desired... and that option has always existed under any version of copyright law.

What is this, comic relief? I agree to very little you have said. And your above statement concerning Public Domain is again wrong. Just in this thread you yourself have given 3 different definitions of Public Domain.

Re: trademark vs copyright, see my above edit and quote.

[jecasc]

It's not like because a page on your website was authored 5 years ago, it is no longer in use. It is and it gets traffic and that has value. I

Yes, but in your original post you mentioned it is an archive of the old print magazines. If that qualifies as active use of the trademark could depend on the circumstances. For example if you only have the old magazines as PDF files sitting in an online archive I would have my doubts if a judge would qualify this as active use of the trademark. Things might look different if you have revised the content and spread it out on HTML websites and still use the magazine name all over the place.

And even then it could depend on the design of your website. If you only use the articles with a remark on the website: "first published in widget magazine, issue 11/1990" this might not be regarded as active use of the trademark either.

Only because a trademark is mentioned somewhere does not necessarily qualify this as active use.

What I mean is this: Only because for example Google has scanned an old magazine that has not been published since the 1930s, and made it fulltext accessible through google books suddenly puts the name of the magazine in active use again.

I am not saying it has to be like this. Only that you should consider the possibility. So better let a trademark lawyer have a look at your website before approaching the company. A short evaluation by a lawyer does not cost the world.

[sundaridevi]

@jecasc: thanks for the thoughtful reply. The magazine was published with the objective of promoting the website. So the articles are normal html web pages that in most cases would be normal website style content. The whole text of the magazine is not online, just the features from 4 or 5 categories. For example, romantic restaurants, visit a city, art & culture, feature interview ... Most of the content was added to the website with the objective of not making the site visitor think it was dated. Every page has the logo on it and every page title includes the disputed trademark.

The risk of confusion is if somebody knows the magazine and thought our content was great, they would search for "Trademark Nightlife", "Trademark Restaurants" etc. For now they get us, later they will get our nemesis who is global but maybe less good at seo.

I'm not worried about the question of active use or the question of is the trademark valid. I've pretty much decided on a course of action.

[tangor]

You really should consult an attorney. This is, as you did indicate earlier, the wrong place to get legal advice (as was also pointed out to you) and threshing this further is... threshing? Poo-poo my comments all you like you might do a rethink... (meanwhile, I haven't changed my tune, you have).

[toplisek]

There are many replies.

I suggest additional great reading like:
Chris Anderson
Free: The Future of a Radical Price
[amazon.com...]

It shows the future of free on-line articles.

[lucy24]

As for USA copyright... public domain these days breaks at 1924.

1923. That is, it has to have been published by the end of 1922. The public domain no longer moves forward year by year; we are frozen until 2019, when books published during 1923 become available. Unless they change the retroactive 95-year rule before then.

:: insert boilerplate about Disney ::

It is not long since I had to jump through serious hoops to convince Someone Up Top that a book printed in 1923 was textually identical to the 1922 original. Not so easy, when there is only one known physical copy of the 1922 version in the US.

Punch line: This particular book was written and published in a Life + 50 country by an author who had no connection to the U.S. and died in something like 1946, so it has long since been in the public domain in its home country. For U.S. purposes-- and for its non-U.S. publisher, who is notoriously cranky on this point-- it makes no difference.

Someone further upthread mentioned Google Books. Note that unless the book was unambiguously published in, let's say, 1796, readers outside the US can only see it if they sneak in through a proxy. If you are anyone other than google, you go by the laws that apply in the country where your server is located, and rely upon the user to make sure they're not reading something they're not supposed to be reading. Google is too much of an International Presence to take chances. Or possibly they've got so many mirrors that they can't keep track of what's where.

[graeme_p]

What is even better is what happened in the EU. When copyright was extended from life + 50 to life +70 public domain books went back into copyright.

I am sure that copyright will get extended again soon.