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Dingo · 03-28-2014, 12:54 PM

If a business trademarks it's name, say Debbie's Diner does it have any legal recourse to prevent the use of its name in an internet post I.e the local food review ?

ShysterJon · 03-28-2014, 01:20 PM

Do you mean the use of the name of a business in a post regarding THAT BUSINESS?

Dingo · 03-28-2014, 02:00 PM

Yes say it was review and they said Debbie Diners meatloaf sucked, could they forbid from using the name Debbie Diner in the review.

ShysterJon · 03-28-2014, 02:29 PM

I'm not a trademark lawyer, but common sense tells me the answer to your question is not only "no," it's "HELL NO!" Such a restriction would violate free speech.

Dingo · 03-28-2014, 04:22 PM

Ok thanks Sj.

ShysterJon · 03-28-2014, 04:39 PM

The interest to be protected by trademarking the name of a business is the exclusive use of the name, so that a competitor may not also use the name and divert business away from the rightful owner of the name. Protection against the use of the name by others referring to THAT business isn't part of trademark protection. We're free in the U.S. to criticize businesses without fear of litigation. Lawyers, and maybe some laypersons, will be familiar with the increasing adoption of anti-SLAPP statutes by states, including Texas. ('SLAPP' is an acronym for 'Strategic Lawsuits Against Public Participation.') SLAPPS are usually filed by a business against a consumer who posts negative comments about the business on the Internet. Anti-SLAPP statutes allow for dismissal of such lawsuits soon after they're filed unless the plaintiff can show the court proof of the validity of its case.

This article is somewhat on point, and notes: "...trademark law specifically exempts noncommercial speech so that the law will not infringe on the First Amendment.... Criticism would be pointless if the person cannot name the company they are bashing by using its trademarks." See Trademark Education & Information, "What does the First Amendment protect?"

19Trees · 03-28-2014, 08:31 PM

In order to prevent anyone other than the TM owner from using the mark, it requires Federal registration. See, http://www.uspto.gov/trademarks/basics/index.jsp

Just because a mark is registered, does not mean that no one can make reference to the mark, of course. "I had a bad meal at McDonald's today..." could not be a violation. If however you opened up a restaurant and decided to call it McDonalds, there would be a violation: 1) use of the mark (or confusingly similar); 2) in the same class as a registered mark (food) there would be prima facie violation. However, it is up to the TM owner to contact the violator (cease and decist letter first, then sue for damages).

Millions of "violations" of TM happen every day, but in most cases the TM owners do no t rigorously enforce. But the big ones do. Try using IBM, or Google or Merck in a way that appropriates and expect a cease and decist letter in a hurry. Many big companies have one or more monitors (usually work in General Counsel's office and are trained as paralegals and librarians) who scan the market for violations of their marks.

A full description of TM law and practice would require 500 pages and a semester class offered in most law schools. However here's hoping this quick and dirty explanation helps.

Oh, by the way the Feds and the courts do not treat the internet differently from any other place "in commerce" ... so TM violations (or not) in the street or on the net are the same for legal purposes.

19Trees

Unique_Carpenter · 03-28-2014, 11:18 PM

Quote:

Originally Posted by ShysterJon

I'm not a trademark lawyer, but common sense tells me the answer to your question is not only "no," it's "HELL NO!" Such a restriction would violate free speech.

Along with your after comments, and repeating myself from an another thread comment, excellent analysis (and enjoyably brief). Have you ever considered teaching? Sometimes your ad hoc commentary is right up with Ricky Kittel's (who just had a nice one published in Kansas)

ShysterJon · 03-29-2014, 01:20 AM

Quote:

Originally Posted by Unique_Carpenter

Along with your after comments, and repeating myself from an another thread comment, excellent analysis (and enjoyably brief). Have you ever considered teaching? Sometimes your ad hoc commentary is right up with Ricky Kittel's (who just had a nice one published in Kansas)

Thank you. Within a few years, I plan on moving into my fourth (and probably final) career -- as a teacher. Who's Ricky Kittel?

Unique_Carpenter · 03-29-2014, 10:27 AM

Quote:

Originally Posted by ShysterJon

Thank you. Within a few years, I plan on moving into my fourth (and probably final) career -- as a teacher. Who's Ricky Kittel?

KS Supreme Court case 104115 posted Friday. He has a quick wit and a research team that are both quite interesting. Almost every paragraph contains subjects that border on items that you've commented on here (no stopping badges in arrest mode, badges trying to cover their backsides, badges not realizing that sometimes their assumptions about law may not be valid, etc.) I read it yesterday after a friend said it was posted. Her original point being that a good researcher is simply worth nearly anything to have on your team.