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Doug Nebeker ("Doug")
I use the term Post-It notes on my website so that customer can understand what "sticky notes" are.
3M's lawyers insisted that I must not use the term in a way that may confuse the user, which I agree.
However, my customers have written testimonials containing these term in different ways like "Post-its", "Post it" without 3M prefix etc (actually referring to their Post-It software notes).
I have told the 3M lawyers that I cannot remove the testimonials. They haven't reverted back yet.
I think I should be able to use those testimonials on my website. They would be considered similar to how visitors/friends would add their comments (using terms that are trademarked) to a blog post or on facebook.
Should I take any additional precautions, steps, update my site's policies etc so that I am safe?
Saturday, October 26, 2013
This one is very tricky, mostly because 3M is a giant company with a huge legal department that is sue happy. But you don't want to just buckle under every time a bully comes swaggering into town.
I think you do need to put the (r) mark in the testimonials and at the bottom of the page say "Post-it(r) is a registered trademark of 3M company." I do this on pages where I reference trademarks.
On this one, if I were you, since it's a big company making threats, I'd have a brief consult with an attorney on whether they have any case or not. If he gives you an opinion paper that your use is fair use, then you can later avoid punitive damages if necessary by showing that you were relying in good faith on a legal opinion from a qualified professional.
Wait for a response from the 3M IP Protection Branch, but you may very well have to replace Post-It(tm) with "[well-known brand of stickies]". Using other people's trademarks in your testimonials is not permitted because you are making a public statement about someone else's products without proof. And don't worry about precedence for software companies, the precedence has been well established in other industries, industries that 3M is very familiar with. Most likely, the only penalty for you is to modify your testimonials, and if 3MIPPB deems your software to be too small a threat to their business to take further action, their letter may just go into a covering all bases file.
Of course, if you are doing everything according to commonly accepted legal standards, you will also have to get new publication releases signed by the people who provided the offending testimonials in order to put the modified testimonials on your web site. This is just one of many reasons why I think testimonials are a bad idea.
"I do this on pages where I reference trademarks."
And you can reference trademarks when giving instructions on how to your products with other products, explaining which products work or don't work with your products, publishing comparisons done by an independent third party, and so on. Statements about products in testimonials cannot be validated and you should only refer to your own products in testimonials. Which speaks to the validity of testimonials in general.
Couldn't you contact your customers and ask them if they mind you changing the wording from Post-It to sticky notes in their testimonials?
To be honest I personally wouldn't be bothered if you changed a testimonial I'd given like that without asking, but to be 100% green you should probably ask.
Saturday, October 26, 2013
Ok, interesting, sounds like testimonial references are a particular specific case.
Yes, tons of references to other products in my product manual, how to guides, tutorials, and tables of facts regarding format compatibility.
None in the testimonials themselves so far. Customers do mention other products in rave emails and discussion board posts, "This product is so much easier to use than ABC" but I've never used one of those in the testimonials on the site. I also don't plan to remove, edit or censor posts on the discussion board that mention other products though. I also find testimonials to be extremely helpful, and no I don't require signed releases, but I do ask for permission for each and every one and retain those emails.
"publishing comparisons done by an independent third party"
It seems to me that testimonials are exactly that. The customer is an independent third party, not an employee of either firm. If he tries both products and finds A better than B, that is a comparison by an independent third party right there.
"The customer is an independent third party"
Not worth going there. The customer is exchanging his/her recommendation for better service/pricing/overall satisfaction. Even though the customer may be using a trademark to make an indirect comparison (as easy to use as Post-It notes, for instance), you are using the testimonial of a customer who benefited from purchasing your product in order to make an unauthorized statement about another product. You can get permission from the other trademark holder(s) or you can pay your customer to evaluate your product, stating that the reviewer has been compensated, and then your customer can refer to trademarks under fair use provisions. I know that sounds crazy, but when quizzing our legal department, we were informed that a testimonial is an endorsement, not a review, and endorsements need permission from trademark holders.
Which means that user forums are allowed to use trademarks without permission in posts. If a customer sends you an email that refers to other trademarks, you can post the email (as long as you have the sender's permission, of course), but you can't publish the email as a testimonial. Another way to look at it is the distinction between referring to a trademark or using it. Any mention in advertising is a use, which is not allowed without permission.
I'm not a lawyer, but I will speculate that this state of affairs is unlikely to change. Most established products have a huge investment in building up brand names. There is no way you invest millions in R&D, marketing and customer service just to have a fly by night, self-employed nobody do something that possibly devalues that investment, regardless of their intent.
I'm not sure how it's a problem if using the trademark symbols and acknowledging that the name is a registered trademark of 3M?
Unless they have their own... ah, they do!
There's a 3M sticky note program, Mmm.
Normally companies are only really interested in protecting their marks, not because they think you're a threat. However here they are not just a paper note company, they have a directly competing product so you really DO have to ensure their can be no confusion.
I'd simply change the wording to "sticky note" and only use their brand name if a very objective fact-based comparison table of features.
And of course IANAL
Sunday, October 27, 2013
Howard's company's attorney's advice seems odd to me. I am not new to trademark and patent issues. The review presented feels like it came from another universe with different principles, or relies on a bunch of case law I've never seen that isn't cited.
The purpose of trademarks in the US, and the reason you get a Trademark is to prevent competitors from impersonating you and stealing your company's name, and/or product or service identities. Cases rely on whether there is a likelihood that the average consumer would be confused by your use and think you are the company selling Doreetos for example. If you sell Doreetos corn chips, made from recycled sewer sludge, there is a very good chance consumers will be confused thinking they are buying Doritos and this use can cause real harm.
Trademark law was never intended to prevent people from mentioning your products in a critical or unsanctioned way and I would be astounded to see a case where that was the criteria.
In short, I think Howard's company's attorneys are shit and should be fired.
Don't rely on this though. It's entirely possible I'm wrong and there's been some major redefinition or rethinking of the entire fundamentals of trademark law that happened while I was attending to other things. That sort of stuff does happen from time to time, especially in the wake of new supreme court decisions.
"I think Howard's company's attorneys are shit"
I'm not going to argue your point, the smartest lawyers don't work for a salary. Our salaried lawyers have strong incentives in place to avoid expensive litigation, and very little incentive to demonstrate their proficiency in court, or even worse, informing the executive suite that millions have to be spent on outside legal aid. On the other hand, their advice is usually the product of expensive experience.
I also think a different standard applies to technical products compared to general consumer products. I also know that a sales rep can say damn near anything he wants, you can call your competitor a Nazi pedophile on an open discussion board and you can plant the most ridiculous and obvious FUD in user reviews, etc. Just don't casually use MegaCorp's trademarks on a web page, because your poor choice of metaphor reflects badly on their efforts to construct an impregnable fortress around their 5-year strategic marketing plans. It costs nothing to remove other companies' bumper stickers from your web pages, so if it saves you one lawyerly letter, you have a net gain. It's your business, not your life.
Ok, those there are good reasons and I agree with you.
There's also an old rule of thumb that it's generally a bad idea in general to specifically name direct competitors in your advertising. Not for legal reasons but because some study way back in the past showed it was less effective than not doing so. Hence TV ads will say things such as "Dentists recommend our toothpaste over other leading brands.", without naming those brands.
Thanks a lot everyone. Law is very complex :(
I use "post-it" term not with an intention to mention (or compare with) the competitor. But for SEO.
Many users search for "post it notes windows" instead of "sticky notes windows". They are just looking for software that does digital sticky notes. They user "post-it" for any brand. Common noun instead of proper noun.
I will wait for their response.
My worry is "what is the worst they can do?". "Can they do anything without giving me prior-notice?".
Monday, October 28, 2013
> I use "post-it" term not with an intention to mention (or compare with) the competitor. But for SEO.
That would likely be considered a trademark violation, you are intentionally redirecting customers from the competition to yourself using their trademark to do it.
I didn't mention this since I had no idea it was the real issue here, but the idea of bidding on the competitor's trademarked name in adwords is hotly debated as to whether it is legally legit. There has not been a decisive court decision on this in the US that I know of.
In addition to legal issues, there's also contractual when working with Google.
Google prohibits use of trademark in ads unless authorized by the holder. However, this is only enforced when the trademark holder registers their trademark with Google requesting it be banned from unauthorized use. The policy is much more nuanced than this summary, see this link for more details:
They allow trademarks as search terms though, unless the holder files a complaint about this use.
Citing trademarks in site text for the intention of getting a google rank on these terms is the same general idea, though obviously you are not explicitly signing a contract so it's not regulated by contract law in the same way as ad words is. The open question is whether such use is legal. I suspect when this is tested, following general principles of trademark law, it will be eventually be decided to be an illegal use since you have a competitor trying to use the other party's exact trademarks in order to confuse customers. If the customer is searching for the competitor's trademark, they want the competitor's product, not to be redirected to some other brand. That's the precise sort of use that trademark law looks down on, and has always done so consistently.
"Common noun instead of proper noun."
Xerox lost its trademark because they didn't defend it.
3M is not the same, they are much more aggressive. Post-It has been consistently defended and has not lapsed into a generic use. Their impending lawsuit against you is how they ensure they protect their mark.
OK, here's a useful summary of recent decided court cases on the adwords trademark issue.
The author of the article asserts that it's OK to use trademarks, but the case law he cites so far is mixed, not decisive.
If you use this in every case:
"Post-it® brand repositionable notes, from 3M"
Aren't you in the clear? It can't be illegal to even *refer* to a tradmarked product name by name, can it? If your users refer to them merely as Post-it notes, then you need to break out the old square brackets for some editorial exertion, which you also should have the legal right to do.
Also, I just found out that 3M has their own Post-it® software, and apparently have some deal with Evernote, since it is the first Google ad that came up when I Googled this.
If the customer is searching for the competitor's trademark, they want the competitor's product, not to be redirected to some other brand." Exactly.
Which really gets back to the whole idea of protecting trademarks. It's no different than putting Armani on cheap knockoffs. Even if it was legal, what's the business case for adopting other trademarks? Why wouldn't you want to differentiate your products? Or do you really want to fight tooth and nail for the too stupid to tell it's fake market?
Scott: "If the customer is searching for the competitor's trademark, they want the competitor's product, not to be redirected to some other brand."
Some do; some don't.
The customer might just want something that works the same way. I have seen specifications for projects that name a brand followed by "or equal". It is common practice in some business areas.
If I am looking for something and I know a trademark, I will usually also be interested in related products. After all, what is so critical about the Post-It brand to most would-be customers? Probably very little.
Tuesday, October 29, 2013
"If the customer is searching for the competitor's trademark, they want the competitor's product, not to be redirected to some other brand."
True for most brands, but some brands have become entirely synonymous for their main products and are, if not legally, at least de facto common nouns.
If I ask you for a Kleenex, I am not asking for tissues of that specific brand. I couldn't care less for what brand it is, I just want to blow my nose. When you look for "Q-tips", are you looking for Unilever's Q-tips or are you just looking for a piece of plastic with cotton at the end? Same goes for Band-aid or Frisbee or... Post-It.
In fact you can even find the following definition in Webster's New World: "small pieces of colored paper in a pad..."
The word has acquired another sense beyond being simply being a brand name ad it can no longer be assumed that the prospective client really want that specific brand and not just the product itself.
The customer is not being deceived when an ad for "post-it notes" leads to a website that sells Post-It notes, even if they aren't made by 3M.
The legal aspect is a different story altogether, but the users aren't being deceived.
Tuesday, November 19, 2013
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