Am I infringing on a trademark?
June 6, 2009 7:30 PM   Subscribe

Am I infringing on a trademark?

Someone just contacted me letting me know, informally, that a phrase I'm using in my new blog's tagline has been trademarked by them "for use on the Web, books, pamphlets, and online stores." They have asked me (nicely) to please not use it.

I've checked, and there is indeed a record of the trademark registration. The thing is, we are in two different countries, though our sites use the same language (English.) I'm skeptical of whether or not my use (as a tagline for a blog from which I am currently not making any money, not capitalized, and not the main title of any product or service) actually infringes on their trademark.

I don't want to be rude to the person. If the trademark applies to me, I'll definitely change the phrase. But I'd prefer, obviously, to not change it, since it is a very important concept to what I'm writing about. And, frankly, it's a really common term. In the past, the same phrase has been used by (rather high-profile) others in the same field.

I do have access to free legal services, if necessary. But I'd like a little informal advice on how all this works. Does my use likely infringe? Should I change it immediately, or would it be worthwhile to hold out?

It is possible I will use my website commercially in the future, if that makes any difference. But for now, I'm not.
posted by anonymous to Computers & Internet (18 answers total) 3 users marked this as a favorite
Use the legal advice you have access to. There's no answer you can get here that will be anywhere near as helpful.
posted by davejay at 8:09 PM on June 6, 2009

The trademark registration link you supplied has expired. Maybe you can memail then mods with more info.
posted by bottlebrushtree at 8:26 PM on June 6, 2009

[Followup from asker.]

Sorry the first link doesn't work. Anyway, the phrase in question is "normal eating."
posted by cortex (staff) at 8:41 PM on June 6, 2009

How big an entity is the "someone"? How deep their pockets are will probably be a factor in how seriously you take their demand.

In my mind, trademarking "normal eating" is kind of like trademarking "bright red" or "comfortable shoes," so it seems like their claim, on its face, is kind of bogus. But then again, I know nothing about intellectual property law.
posted by jayder at 8:53 PM on June 6, 2009

I just looked at the 3 trademarks for the phrase 'normal eating', and what's sort of interesting to me is that there are 3 separate trademarks for totally separate uses. I don't know much about this, but it seems to me that if there are 3 legitimate trademarks, then nobody really has a legitimate claim to exclusivity of use, or for you not to use it. I might be off about this though.
posted by kch at 9:04 PM on June 6, 2009

Technically, the areas their three trademarks cover is:
Series of books, brochures, pamphlets, magazines, and printed seminar course materials directed towards helping people to free themselves from food and weight obsession and manage the pressures that cause emotional eating, so they can eat according to body wisdom and lose weight without dieting. FIRST USE: 20090306. FIRST USE IN COMMERCE: 20090306

Providing on-line electronic bulletin boards for transmission of educational messages among computer users on the causes of and prevention of compulsive eating disorders. FIRST USE: 20020210. FIRST USE IN COMMERCE: 20030109

On-line retail store services featuring magnets and laminated cards, books, workbooks, journals, pamphlets, CDs, DVDs, newsletters, and brochures, all dealing with solving compulsive eating problems. FIRST USE: 20050801. FIRST USE IN COMMERCE: 20050801
I'm not IP lawyer (or any other kind of lawyer), but "normal eating" sure strikes me as a descriptive mark in that context. I don't understand why the USPTO would have issued it in the first place. But, like davejay says, use the legal advice you have access to.

If random advice from non-lawyers who don't know what country you're in or what IP treaties might be in place between your country and the US is what you're after, here's my gut feeling: Karen R. Koenig's book "The Rules of Normal Eating" was published in January of 2005. She's had a web site based around the book for about that long, which uses the phrase "normal eating" all over the place. Sheryl Canter's book "Normal Eating for Normal Weight" came out a few months ago, as far as I can tell. She's run an online support forum with that name since 2002, and that's probably why she registered the trademark, but if she wasn't able to get Koenig's book and site squashed, she probably won't be able to squash yours either. I'd keep the name.

But do take advantage of those legal services you mentioned. What the hell do I know?
posted by hades at 9:09 PM on June 6, 2009

kch, the same entity (Permutations Software, Inc, which is Sheryl Canter) owns all three of those trademarks.
posted by hades at 9:12 PM on June 6, 2009

In reading what Hades wrote, it seems as if #3 was the one who contacted you...but they don't get to use it "online". They only get to print stuff with "normal eating", while #2 actually can use it on the web. seems as if #3 can't use it online because #2 uses it online for the transmission of educational messages. AND...#2 got there first by about 3 years.

If #2 isn't the one bugging you...feel free to use it as your tagline. Just don't use it in an online store that sells magnets, and workbooks.

I say contact #2 and ask them if you can use it (just to be courteous) in your non-threatening, non-competing tiny little blog. Then when you get no response, or a "sure, whatever", feel free to tell #3 to shut the F up.
posted by hal_c_on at 9:21 PM on June 6, 2009

It's difficult to say whether your use is infringing without seeing both trademarks and how they're used. The three registered "Normal eating" marks are all registered to Permutations Software, Inc, so I'm going to assume they sent you the letter. Could you maybe explain a little more about how you use the mark on your site, and how it is used on theirs?

Their registration seems to imply that their use is related to eating disorders and self-help guides for overcoming eat disorders, and the online sites that go with this. If you're use is not related to eating disorders, you have an argument that your use is not confusingly similar. The test for TM infringement is a "likelihood of confusion." And that's hard to tell without knowing all the facts.

The fact that you're not making any money off your site doesn't really matter. Your use would still be considered a "use in commerce." Also, it doesn't really matter that you're in another country. Your site is available in the US, so they could sue you in the US if they wanted too.

If you have access to free legal advice, go use it. It's worth it to look into. If they have the money and desire to litigate this, it may end up being more costly then you'd like, even if at the end of litigation you win and can use the phrase. So consider that as well.

I work heavily with TM's, so if you have any general questions, feel free to ask or mail me. I am not your lawyer. This is not legal advice ... etc etc. Go talk to your free legal services. They'll be able to come up with a plan.
posted by Arbac at 9:21 PM on June 6, 2009 [1 favorite]

or you might want to switch it to "eating normal"
posted by hal_c_on at 9:24 PM on June 6, 2009 [1 favorite]

One question you're going to have to ask is not "would I win in a court battle," but "do I want to have a court battle in the first place"?

With that in mind, perhaps the whole thing could be sidestepped by changing your tagline to "eating normally," or some other variation on the phrase.
posted by lore at 9:28 PM on June 6, 2009

The only real answer to this question is to talk to a trademark attorney.

That said, I will express my layman's opinion based on doing extensive research and having quite a few conversations with a lawyer about trademarking a phrase we use at work.

My understanding is that you can trademark a phrase if you can prove that the phrase is also part of a brand. The idea behind it is that trademarks allow consumers to identify a specific product or service of a particular company, in order to distinguish it from the same or similar products/services provided by other companies. My understanding was also that trademarks from one country don't automatically translate elsewhere, unless there are agreements between the countries to do so.

The upshot is, if there is a trademark registration (and it covers the web specifically), then they likely have the legal right to send a cease & desist letter like they did, and potentially to sue you if you don't comply. Again, that's just my understanding from extensive reading. However, I also agree with jayder that you have to consider the company. C&D letters are a cheap way for them to try to deal with "infringing" materials - they may never go further than that even if you continue to use it.

I think you might want to look at Chilling Effects - a website set up to help people deal with potentially-bogus C&D letters.
posted by gemmy at 9:45 PM on June 6, 2009

I think whoever is marketing "Normal Eating" is trying to mark it as a new concept - like a new fancy, smancy diet.

If you're trying to build off this concept (i.e, you read the book and now you want to write about it), then you are infringing on this trademark, willfully or not.

It seems to me that this is what you're doing- you talk about "the concept" as if you've read about it before.

If you're just trying to write about eating healthy, just change it. Honestly, it's not worth the hassle. The tagline of your blog isn't going to drive in readers. The #1 rule of your blog is your content. The tagline is not going to make the content.

I find this funny b/c whoever owns the trademark could benefit from you using it- you're just a small-time blog owner- any exposure is good exposure for her.

To her, you're only worth suing when you earn money- when she can get something out of it. Additionally, she's a one-man operation, by the basis of her website, selling shareware utilities- she probably doesn't even have enough money to sue you anyway.

BUT, if you become the 1 in 10,000 blogs that takes off and starts generating revenue, you're going to want a "free and clear" history- like buying a car, you don't want one that's been in an accident.

So, change the tagline- "Normal, Healthy Eating for the Normal Person", etc. In the end, your content will matter more.
posted by unexpected at 9:53 PM on June 6, 2009

Tell then to pound sand. "Normal Eating" is as about as close to a generic and descriptive term as there is. Send your regrets with a coupon to McDonald's for a burger and fries.
posted by caddis at 12:48 AM on June 7, 2009

There is little doubt in my mind that you won't have much trouble using this phrase; in fact, you should register it yourself. If yours is even arguably the first use in your state of origin, you have a strong case to be the trademark holder.

The essential and primary fact that people are ignoring here is that you and the trademark-holder are in different countries. It would be one thing if you were talking about copyright, which, because of several international treaties, has become a trans-national legal precedent. However, trademark law has not left the boundaries of localities and states; although different nations have different rules regarding trademark, almost all English-speaking states give precedence to (a) the person who first used the trademarked phrase in the nation of jurisdiction or, if that is disputed, (b) the person who holds the trademark registration in the nation of jurisdiction.

Long story short: if, as you say, no one has registered this trademark in your nation yet, you certainly are not infringing now. And, what's more, if you'd like, you can prevent them from registering the trademark if you like; finally, even if you don't register the trademark, if you are in a nation where first-use trumps registration (which is true in many countries) then the very email they've sent you stands as strong evidence of first-use, and therefore for your own claim to the trademark.

In any case, you needn't worry about being taken to court; you're not in their jurisdiction, and there aren't any international treaties regarding trademark law so far that I know of.
posted by koeselitz at 3:29 AM on June 7, 2009

I do have access to free legal services, if necessary. But I'd like a little informal advice...

What you're getting in this thread isn't "informal advice." It's uninformed speculation and, in several instances, flat wrong. Disregard it and have a conversation, formal or informal, with those free legal services.
posted by cribcage at 7:31 AM on June 7, 2009 [1 favorite]

or you might want to switch it to "eating normal"

Normal sounds delicious, but I think you'd want to go with "eating normally."
posted by ludwig_van at 5:56 PM on June 7, 2009

IAA(IP)L but IANY(IP)L. The answer is you'll need to talk to a lawyer who knows -- really knows -- something about the use of trade-marks on the internet. There's a reason why most law schools have a series of courses about internet law. You haven't provided enough information to properly assess your situation.

Trade-marks are completely national so a US trade-mark does no good at all outside of the US, but your use of it on the internet may constitute using it in the United States if the circumstances are just right. And if your web host is in the US, they may not appreciate the distinction.

Also, the trade-mark holder in the US may have used it in your country enough to have common law rights (if they exist in your unstated country) that would trump your rights. Or, conversely, you've been using it long enough to invalidate their trade-mark. Or it's just so generic they really have no enforceable rights. All of these are very fact based and only a lawyer with all the facts can properly advise you.
posted by Hali at 2:15 PM on June 13, 2009

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