Wednesday, January 26, 2011

Traverse Internet Law Federal Court Report: September 2010 Trademark Infringement Cases

The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.


1-800 CONTACTS v. BRANDAN HARNER d/b/a 1800CONTACTS-COUPON.COM
CENTRAL DISTRICT OF UTAH
2:10-CV-00927
FILED: 9/20/2010

If you are an affiliate marketer you must abide by the contract of the advertiser. If nothing at all is said about the use of the advertiser’s trademark name in your advertising then it is likely you are permitted to use the trademark through an implied license theory until you are told that you cannot use it. Resellers have certain rights to use a trademark in describing a product, but as an affiliate marketer you are not a reseller and are governed strictly by the expressed or implied license existing between yourself and the advertiser.

Plaintiff is engaged in the retail sales of contact lenses, including marketing and selling contact lenses via the Internet. Defendant is a Missouri resident operating a website with the Plaintiff’s name included. The website address is www.1800contacts-coupon.com. Defendant was an affiliate marketer of the Plaintiff and the affiliate marketing agreement between Plaintiff and Defendant prohibited the use of domain names with any variation of Plaintiff’s trademark contained within the domain name. Defendant is alleged to also be keying Google AdWords advertising off of Plaintiff’s trademark.

The lawsuit includes counts for cybersquatting, trademark infringement, contributory trademark infringement, trademark dilution, common law unfair competition, and unjust enrichment. The Plaintiff requests preliminary and permanent injunctive relief, transfer of all infringing domain names, an accounting of Defendant’s revenues and profits, an order for Defendant to promulgate corrective advertising, actual damages, statutory damages in the amount of $100,000 per domain name, treble damages, costs and attorneys’ fees. Traverse Internet Law Cross-Reference Number 1447.

Tuesday, January 18, 2011

Traverse Internet Law Federal Court Report: August 2010 Trademark Infringement Cases


The facts are unproven allegations of the Plaintiff and all commentary is based upon the allegations, the truthfulness and accuracy of which are likely in dispute.


ASHLEY FURNITURE INDUSTRIES, INC. v. VALUE CITY FURNITURE, INC.
NORTHERN DISTRICT OF ILLINOIS (CHICAGO)
1:10-CV-05413
FILED: 8/26/2010

If you are going to use comparative advertising make sure that the underlying data, and the descriptive words used, are not inaccurate, false, or misleading. Otherwise, the use of a competitor’s name will be seen as trademark infringement and not protected under the “fair use doctrine” that permits comparative advertising. The analysis of what is, and what is not, proper comparative advertising is very complex.

Ashley Furniture is a manufacturer of furniture and Value City is a retailer. The Defendant is running online advertisements comparing the prices of Value City Furniture products to those of the Plaintiff. The Plaintiff is claiming that the comparative advertising is false and the Defendant is therefore infringing its trademark.

Ashley Furniture Industries, Inc. alleges false advertising, trademark infringement, false designation of origin and unfair competition, trademark dilution, product disparagement, violation of Uniform Deceptive Trade Practices Act of the State of Illinois, and violation of Consumer Fraud and Deceptive Business Practices Act. They are requesting preliminary and permanent injunctive relief, an awarding of Defendant’s profits, treble damages, punitive damages, actual damages, and reasonable attorneys’ fees and costs. Traverse Internet Law Cross-Reference Number 1446.