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Old 09-24-2004   #1
Dj Morri
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Trademark - SEO legal ?

Hello everybody , a quick question:

Let's say you use Wordtracker and find 1000 searches a day for "nike shoes" and you buy a domain name "buynikeshoes.com" actually that domain is available, but just to make my point.

You optimize that site, quality content, keyword prominence, h1, bold, etc. all the SEO process and you sign up with CJ.com to link your site to some site that sell those shoes for a comission.

What happen if you start making $3000 dollars per month on comissions ?
Nike can sue you for use their brand on a domain name ?
What is the worst case scenario for this case ?

Last edited by Dj Morri : 09-24-2004 at 11:15 AM.
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Old 09-24-2004   #2
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another example

when I was selling health insurance back in the day in San Diego, we had the idea to have a site dedicated to selling Blue Cross and Blue Shield, and we decided to call it bluehealthquotes.com. We received a cease and desist letter within weeks, apparently "the Blues" had someone keeping an eye on domains being purchased w/the word blue in it. The letter told us that we could not use the word "blue" in our site name because it was trademarked. Any site that sold health insurance was apparently forbidden to use the term blue in the URL. We found another name and bid PPC on a bunch of "Blue Cross" and related terms and it worked. Nothing they can do about that.

I believe that Nike would probably do the same thing.

Your question is not about PPC, so let me answer that: IMO, there's nothing against optimizing the site for the nike terms, but you would probably have to put a &trade (TM sign) next to it each time...

by the way, see more about htis topic at this forum.

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Old 09-24-2004   #3
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Thank you for your note Chris, this is natural SEO not PPC

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Old 09-27-2004   #4
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dj

please re-read my post...the first para pertains directly to your question.
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Old 09-27-2004   #5
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For the international users of the forum I think it may also be appropriate to point out that laws may not be the same in all countries. I think we tend to discuss these issues from a US point of view, which is fine since many of you come from there, but for the rest of us we just have to check with local law and see if the same apply here - it may be better or worse, but usually not the same
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Old 09-27-2004   #6
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Mike this case is here (USA), what do you think ?
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Old 09-27-2004   #7
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One thing that works great is if you do a comparison between your products and the competitor's products. In many cases you can get by with it because you're comparing apples to apples--and you must mention the competitor's product to explain it to your users.

If your product has more features or better features, then tell your users. There's nothing wrong with mentioning them--the tv commercials do it all the time now.
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Old 09-27-2004   #8
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Trademarked Terms and Organic SEO

Worst case scenario the company may send you a cease and desist letter.

A couple of things to do if you are optimizing a site for trademarked terms:
  1. Use appropriate trademark characters where appropriate
  2. Buy a generic domain name - good = 'namebrandrunningshoes', bad = 'nikerunningshoes'.

Generally, if you are not misrepresenting their brand, and use the term to promote their product or services you will not run into problems.
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Old 09-27-2004   #9
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It depends...I think

Hello Ladies & Gentlemans;

Maybe NIKE is a huge company with an international brand (of course it is!), but think about just a common name...some hotel´s name or maybe a National Park´s name.
In Costa Rica, we have a lot of National Parks and Refugies, so we optimized the pages using the keywords related with those places...

I think that maybe it will depend of which legal "Trademark" you want to use.

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Old 09-28-2004   #10
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Carlos y cual es tu punto entonces acerca del trademark, que tiene que ver el national park con lo que explique en el primer post ?

I did bad buying a domain name with a brand, but there is nothing I can do now, just wait. I am making money for this and the final seller is actually "nike" in this hypothetical case through an affiliate, so it's not that bad.

Thanks everybody
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Old 09-28-2004   #11
Carlos Chacón
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Trademark is a trademark

Hola Dj Morri,

National Parks also have a "Trademark"...names!
Who´s the owner? The Goverment maybe. So, many companies let´s called itselft as the National Park´s name.
So, maybe you will find web sites as:
http://www.arenal.net/ who used http://www.arenal.net/tabacon/....Information about Tabacon...who´s a trademark here.

You wrote "Nike can sue you for use their brand on a domain name ? "...
So, Tabacon Resort can sue arenal.net for use the brand and photos in the web site....

Who knows? Honestly, I do not think so....
That´s why I said : ...it will depend of the trademark that you want to use...
It is just an example with a different trademark.

Gracias!
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Old 09-28-2004   #12
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Thank you Carlos
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Old 04-29-2005   #13
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Ppc?

So this does pose the question I've been trying to find. Can you bid on a competitors name provided you do not misrepresent who you are? For example can Wal Mart bid on the term Meijer so long as the title identifies them as Wal Mart and the description says something like "Shop and compare our prices with Meijer"? I've not found anything yet that says I can't bid on a competitors trademark so long as I'm not misreprisenting myself.

Little help here.
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Old 04-30-2005   #14
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Moved Thread to Legal Issues

Moderators Note:

I've moved this thread to the SEO and Legal Issues Forum because it's more of a "legal" thread rather than a PPC, Domain Name or Organic issue.

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Old 04-30-2005   #15
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Here are some of the general rules about trademarks. I'd love to say that if you know these you will be able to answer your own questions, but that would be optimistic, especially with regard to the internet. I hope they will help focus your questions, however.

1. A trademark includes any word, name, symbol, or device, or any combination, used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. In short, a trademark is a brand name. A service mark is the same thing, except intended for services rather than goods.

2. It is not necessary to register a trademark for it to exist, but it's a really good idea, since it provides notice and has several legal advantages. If you have not registered a trademark, you would use ™ (SM for servicemark) to designate the trademarked item, if it is registered, then (and only then) you can use the ® symbol.

3. A Trademark is geographically focused. Trademark rights are limited to the territory of the government that grants them. You can legitimately have "Mikes Garage" trademarked by different people in different countries, and even in the same country - one in Detroit and one in New York, for example.

This is a HUGE issue when it is applied to the internet. There is no way to register a trademark "for the internet" other than general use and fame to the degree that everyone knows the brand (ie Coke or IBM), but that's not registration, just common law rules, and some jurisdictions (those using Napoleonic Law as a basis, for example) don't use the common law.

It is OK to use the same mark as another company, so long as the new use isn't likely to confuse consumers. Many internet trademark disputes are about this.

4. You can't get a trademark on names that are primarily geographically descriptive (or misdescriptive), a generic name, description (or misdescription)for an item, or a surname. There are rare exceptions to this due to longtime use and fame, but if you are just starting out, this is the rule you have to live with.

There are several types of phrases that can be trademarked:

Quote:
A fanciful mark is a mark someone made up; examples include KODAK or HÄAGEN-DAZS. An arbitrary mark is a known term applied to a completely unrelated product or service; for instance, AMAZON.com for an online book-store cum one-stop shopping site or APPLE for computers. Fanciful and arbitrary marks are considered strong marks and garner substantial trademark protection.

A suggestive mark is one that hints at the product, but which requires an act of imagination to make the connection: COPPERTONE for sun tan lotion or PENGUIN for coolers or refrigerators are examples. Suggestive marks are also strong marks and receive protection.

A descriptive mark, predictably, describes the product: HOLIDAY INN describes a vacation hotel and FISH-FRI describes batter for frying fish. Descriptive marks do not receive any trademark protection unless their user has used them in commerce and has built up secondary meaning. "Secondary meaning" occurs when consumers identify the goods or services on which the descriptive term appears with a single source. In other words, if consumers know that HOLIDAY INN hotels are all affiliated with a single source, then the mark has secondary meaning and receives trademark protection.

Finally, generic marks simply designate the variety of goods involved: for example, "cola" used on soft drinks and "perfume" on perfume are both generic terms. Generic marks never receive any trademark protection; they are free for everybody to use. (Keep in mind, though, that "Cola" on a nightclub is arbitrary, and therefore receives protection).

If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop, then you can safely guess that the c & d is baseless. On the other hand, if your opponent is concerned about the fact that both of you use of the term "Sweet Pickles" on alpaca sweaters, then the c & d may have some merit.
Source: http://www.chillingeffects.org/trademark/faq.cgi

5. Currently, it's technically legal in the US to bid on trademarked names. HOWEVER, this is under hot dispute and is a ruling of a lower court that is currently being appealed, which means no competent lawyer would tell you it was OK without a whole bunch of weasel words - technically, it's legal - but until the matter is no longer under appeal, it's not settled. If France, it is illegal, but currently under appeal - the same warning applies there, as well.

In short - we don't know yet, so proceed at your own risk, and I recommend you get a written opinion from your lawyer so you can use it as a defence (and their insurance to pay off the judgement if their opinion is incorrect).

If this sounds like the kind of opinion a law firm would not write without a LOT of money, if at all - you are correct. I personally don't know any that would, but there might be a few out there - just make sure their insurance is fully paid.

Better yet, avoid the whole issue if you can, for now. Personally, I think it should be legal, under certain circumstances (ie no possibility of confusion), but I certainly see the trademark owners side of things.

---------------

That's it in a nutshell. One key point is that trademark is very much an issue of local law - so just because something is OK in one jurisdiction doesn't automatically mean the same rule applies in another.

In general, when someone registers a domain like "buynikeshoes.com", to use the above example, they are trading off the power of nike branding - the word "nike" (which is trademarked by someone else) is the most powerful word in that phrase, based on branding and marketing by someone else.

Worse, for "Nike", the name is fanciful (the most powerful type of trademark) whereas buynikeshoes.com is primarily descriptive, the lowest type.

Especially important since Nike sells shoes.

Now, if the domain was "fixnikeshoes.com" or "buyusednikeshoes.com" it would not be as likely to be considered an infringement, since Nike does not fix shoes or sell used ones (that I know of). They may still complain on principle (and may win) but it's a lot less clear.

The domain "nikesucks.com" would usually be allowable under fair use rules, since the intent is not to trade off of the brand to sell shoes, but rather to comment or parody.

Hopefully that's more helpful. I'll give you the standard disclaimer that although I have a background in law, I do not practice publicly and this should not be considered legal advice - you should get a lawyer in your own legal jurisdiction to advise you on anything that may cost you a lot of money if you lose.

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Old 04-30-2005   #16
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Originally Posted by Mikkel
For the international users of the forum I think it may also be appropriate to point out that laws may not be the same in all countries. I think we tend to discuss these issues from a US point of view, which is fine since many of you come from there, but for the rest of us we just have to check with local law and see if the same apply here - it may be better or worse, but usually not the same
Maybe, Mikkel, but not necessarily in this instance. Since the name being used is a ".com," there is quite possibly jurisdiction over at least the name in the United States. (In the Eastern District of Virginia to be more exact.) See: I'll see your domain name in (US) Court!

The suits themselves would be against the domain names, as if they were property that could be taken, and seized. This type of jurisdiction is known as "in rem" (against the thing), as opposed to jursidiction over the holder of the domain name, which would be "in personam" (against the person). So it doesn't matter where the "owner" of the domain name is located. The domain name itself is considered to be in Virginia when it is a ".com".

The cases that are discussed in the article are: Porsche Cars v Porsche.net and others (pdf), and Harrods Limited v Sixty Internet Domain Names (pdf).

One of the articles that is often cited when discussing this type of jurisdiction as it might apply to domain names is a Washington Law Review article by Thomas R. Lee, In REM Jurisdiction in Cyberspace. The article was written before the US federal courts ruled in the two cases above.

I believe that most other countries don't treat domain names as if they were property, located in their place of registration. But, if the name is a ".com" name, it may just be brought into court in Virginia.

Of course, as Ian noted, consultation with an attorney who is in your jursidiction, and has some knowledge of intellectual property as it applies to the internet is the wisest course of action when faced with this type of situation.
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Old 04-30-2005   #17
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You are only talking about the domain issue but there is a lot more at stake here: trademark law, marketing law etc - depending on jurisdiction. If a Danish company register a domain that violate my trademarks in Denmark the case between us will take place in Denmark under Danish law. That is completely independant of how to resolve the domain dispute in itself - the harm his actions might do to my trademark, or the marketing laws he migh violate is a local issue and will most definately not fall under US law. Also, a danish court will be able to rule that a danish company is not allowed to use a domain if it violates law in the country that company operate or market to.

So I tick to my statement with the important point that: If you think all you hear at forums about how law works and you live outside the US you better check with your local lawyers!

We often experience another "funny" thing here. Because of all the police and legal movies and TV-series coming out of the US and into our homes here many people think that what they see is how law works here too - such as the right to make one phone call, use of police agents etc. and even how the court system works. It's not.

There is nothing wrong with the US movies and shows - it's not a critique of them, or all the great postings US SEOs make in forums like this, but it's a warning to all users outside the US: Law in the US and in other countries are most often not exactly the same and sometimes in fact very, very different.
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Old 04-30-2005   #18
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So I tick to my statement with the important point that: If you think all you hear at forums about how law works and you live outside the US you better check with your local lawyers!
I agree with you. Often the laws are very different, and that can't be stressed enough.

I do think that it is necessary to keep in mind, though, that there are some instances, like the domain name one I mentioned, where location is immaterial. Because the internet doesn't have the geographic borders that the physical world does, there are going to be laws that may have an impact upon you even if you don't have a presence in that other country.

But, when you check with your local lawyers, make certain that they are well enough versed in the laws of other jurisdictions when it comes to the internet, and how those could have an impact. They should also have an understanding of international laws like the Madrid Protocol which allows for international registration of trademarks (at least amongst the signatories to the protocol).

As for the US movies and television shows...

There are a lot of people here in the US who get a distorted view of the law from those, too.
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Old 04-30-2005   #19
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there are going to be laws that may have an impact upon you even if you don't have a presence in that other country.
Yes, and there are many examples of that - and it goes both ways. As an example the Marketing laws in most European countries is applied to any company that market to users in that country - even if you are from the outside. Off course, if you have no assets here it could become very difficult to actually collect any fine you might get or "punish" you in any other way, but the law would still apply. I am sure the US has laws that they would require me to comply with if it's aimed at US users even though I do not live in the US.

You are right, it does complicate things
You definately need a lawyer that knows both local, regional (i.e. US Federal or EEC) and global agreements that applies to you. I have a realy good local law firm I use specialized in Internet related law issues so they work perfet for me.
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Old 04-30-2005   #20
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One other thing to point out - like it or not, your local laws may not have a lot of bearing on the issue.

Why? Enforcement.

Let's say that your country passes a by-law making it illegal to show a human face on a website. This was actually law in Taliban ruled Afghanistan. It may still be law in other fundementalist Islamic nations and other jurisdictions where viewing of the human body is tightly controlled.

Although it's true that the Taliban had complete authority over it's citizens, the only way it could enforce that rule would be to either stop it at the border and/or pass harsh laws on it's citizens. It would not be able to demand that Google (a US company) do things it's way. It's control existed only within it's borders.

So the result is that although the laws of many nations are involved, only two matter - the legal jurisdiction of the search engine and the legal jurisdiction of the person using Google.

Futher, only the legal jurisdiction of the search engine can actually affect the search engine directly, the legal jurisdiction of the user can only affect the user.

This means that saying that US law does not apply is wrong. It's the only one that does truly apply to the Google. It can't be any other way - it's flatly impossible to comply with the local laws of every nation and jurisdiction on earth - they conflict frquently. Danish law applies to Danes using Google, just as Taliban law applied the those under Taliban rule. Danish law is so different from the rules under the Taliban with would be impossible to comply with both, for example.

The only way the Dane, Canadian or, yes, French law applies to Google would be if 1) Google had a physical presence or office in the jurisdiction, and 2) indirectly due to to the effect of the law on it's customers and thus finances and corporate policy.

An example of this is China. Google offers an altered version of it's results within China in order to comply with Chinese law. But Google itself does not have to comply - it only needs to comply if it wants access to the Chinese market. And you will note that they did not apply the altered results to the rest of the world.

So it's inaccurate to say that US law does not matter as long as the the head office is in the US - it's the only law that directly applies, and is therefore the default legal system that Google is using, and indeed MUST use. At the point where Dane, French, Taliban or Canadian law conflicts with the laws of the US, the US must take precidence over them as far as the head office is concerned. The other laws only apply to citizens of the jurisdictions involved.

So the bottom line is it's (mostly) a waste of time to talk about your local law and what Google does.

It is CRITICAL to be aware of your local law vis-a-vis what YOU are doing. Just because Google physically allows you to look for photographs of humans or nazi relics or bid on competitors terms does not mean that YOU can.

Assuming that your local laws and ideals apply to a person or company in a foreign country is just as parochial coming from your country and applying to the US as it is coming from the US and applying to your country. It works both ways.

You are responsible for acting in accordance with your local laws, (or forcing your government to change them if you disagree) primarily. If Google wants to operate as a business and market to a local jurisdiction, then they will also have to obey local laws, but really, that's not your concern as a user.

You concern is not that Google allows you to optimize for a competitors keyword, but whether or not your government does.

Here is an interesting issue, though. There are a few jurisdictions that do not have any significant trademark law (most do - it's good for business). If I'm in that jurisdiction, technically I can violate trademarks and patents all day without a problem. This isn't a big issue locally, but it can be huge when applied to the internet.

This is one reason why I'm personally opposed to using local laws to apply to most internet based businesses. There should be (IMO) some sort of basic enforcable standards. There should be a set of generally accepted "internet rules" and then, in addition to those, local law would apply to you. Kind of an Internet Commerce Treaty. The more strict of the two rules would apply.

Will this happen? Maybe, but not in the near future, I'm sure.

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