Reseller's using our trademarked company name

[Novus]

Today I found a customer/reseller of ours using our trade marked brand. Which i wouldn't normally have a oroblem with except it was used in thier page titles

Page title for example was:
trademarked brand - widget office.com (a very generic term which makes it look like they are actually the company I work for)

I first thought hey at least some believe in the brand but then I wonder how much of our traffic they get due to their misleading activities. I’m thinking the best way to deal with it, is an email politely asking them to stop?

[tangor]

You would certainly start with that! Then, depending on the response, determine how to proceed from there. This presumes, of course, that the "trademark" is actually a registered trademark.

[httpwebwitch]

Hmm. They're reselling your products and presumably you're benefiting from that, so there's no need to be confrontational, but... you should open communication with them about the risk of misrepresentation and confusion.

An aggressive email commanding them to STOP isn't the right approach.

Even if it's not a registered trademark, that conversation is a good one to have with your reseller. A phone call with them is a chance to talk about the branding/trademark issue, but also to get to know someone there on a first-name basis and establish a rapport.

[bwnbwn]

http nice post I agree you never know were it might lead.

[jecasc]

The problem is that in most countries including the US there is something that is called "exhaustion of trademark rights".

Which means once you have brought trademarked goods into a market your trademark rights are limited and you are no longer able to restrict sales of the trademarked goods or any distribution and marketing efforts by resellers. Which includes using the trademark in a title tag of a resellers website.

So you should be careful about how you approach this, because you might not be within your rights in making any requests for changes.

Here a very informative website about this issue:

[iusmentis.com...]

[tangor]

"exhaustion of trademark" is not the same as "trademark dilution" or failure to protect "trademark in use".

Exhaustion simply means that you can sell your Ford Escort (car) to a third party without consulting the trademark holder (Ford)...

Dilution is allowing others to use the trademark in THEIR business with no attempt made to stop that activity (look up "asprin" and "kleenex" or "xerox" for examples...) which can lead to Failure to protect trademark "in use" and result in loss of trademark.

Unlike copyrights, which have fixed terms, Trademarks can be continually renewed (look at trademarks found on some soft drinks, movie characters, heroes found in books, etc.) When the trademark holder fails to protect or renew, then the trademark can be lost.

We can't give legal advice, but opinions are reasonable... In this case there are two opinions immediately available: 1. Draw up a license agreement with that other party for the use of your trademark (and you get paid for it... meanwhile retaining all right to the trademark) or 2. a cease and desist.

Consult an attorney. If this product has any legs or value, you don't want to mess with your trademark!

[jecasc]

@tangor
Exhaustion of trademark is what we are talking about here. A reseller of his brand is using the trademark in order to resell the products - at least that's how I understood the OP.

[tangor]

I first thought hey at least some believe in the brand but then I wonder how much of our traffic they get due to their misleading activities.

The above is the line of the OP that is of concern to me. Confusion, dilution, failure to protect... these are things that need to be addressed. In particular: "misleading"...

[bwnbwn]

He said

Which i wouldn't normally have a oroblem with except

I read this as if he takes a stance for one user then you had better be ready for the rest. He allows use of it as stated so if he doesn't have a defined use on his trademark he is treading on very thin ice why I completely agree with http's reponse.

Case note paypal banned me for selling X product. Ok well fine. Did a search and guess what ebay had the same product all over the place plus aseveral ebay stores with the same product all going through paypal. Did some more digging and found many other sites selling the same product through paypal. BTW product is a totally legit product the reviewer had his pants ina wad or something and didn't have a clue.

Anyway I put together all my findings in a real nice email and registered letter to paypal with my findings and my possible actions. It was several months latter we got invited back about this misunderstanding. I had the pleasure of telling them to kiss off.

If you allow your brand to be used by resellars and then see one that might be a problem and don't have well written detailed examples of the way your trademnark can be used better be ready is all I am saying.

[jecasc]

I guess you would have to see the original title tag.

However he says it is something like

trademarked brand - widget office.com

if that was

Ford - Cars office.com

and the website is a reseller of Ford - I would not see how this would in any way violate trademark rights.

Manufacturer Name + Product Name + Website name is a perfectly normal title tag for a reseller website.

[bwnbwn]

jecasc
agree

[piatkow]

Unless there is some explicit passing off involved then I fail to see the problem as well. Step back from the web, this sounds no different to a B&M store putting a poster in the window saying "we sell x".

[httpwebwitch]

Years ago while pumping out agency work, I'd occasionally get lawyers writing aggressively worded letters about the use of trademarks. Usually all they really needed was for there to be a little "TM" beside the name, and a citation at the bottom saying "such and such is a trademark of whatever corp".

You've seen those before. Some people care disproportionately about those little TM's.

[Novus]

Hi folks, thanks for all the input in this topic. the way they have their page/content/title's set up it would be very easy to mistake them for us. Using our brand helps this misconception along. As they a reseller we certanly dont want to go in "like a bull in a china shop" an cause trouble.

I think a phone call or email would be the best bet. What there currently doing just isn't in good spirit i feel.

[jecasc]

You should just check your motive on what you are doing. If your motive is really that the website could be mistaken as you - the manufacturer - then you might have a good reason to do something, because at some point other resellers might complain.

If your motive is however that you are beginning to see your resellers as competition yourself - then you've got a problem at hand.

I have seen this happen before - manufacturers that at some point thought they could get a piece of the internet pie for themselves - bypassing resellers and selling directly to consumers. And when it did not work out - because they did not have the expertise - they started to believe that the resellers must be using some "dirty tricks".

Usually this does not turn out so well. I had one manufacturer who sailed on this boat. In fact it was not our website - it was that we shipped within 24 hours, he within a week (ok for wholesalers but not for consumers). We gave lots of free samples. He exactly one with each order. He sold to consumers like he did to wholesalers - what is good for those must be good enough for the others. Didn't work out.