Trademark abuses of the month

by David Nieporent on June 27, 2007

Although trademark law certainly has plenty of intricacies, the essence of trademarks is the protection of consumers from confusion in the marketplace. When one buys goods or services, one should be able to know the manufacturer of those goods or provider of those services. Except, of course, when lawyers get involved; then trademarks are just used by large businesses to stifle competition. Infoworld reports on how some companies are abusing trademarks to shut down smaller competitors on EBay. EBay, to avoid liability for trademark infringement by its sellers, is quick to shut down any auction when a trademark holder complains. And then makes it difficult for the seller to reverse the decision:

As she began the process of getting EBay to reinstate her account – which includes having to take a condescending online tutorial on intellectual property and swearing that you’ll never be bad again – the reader also was able to contact with other EBay sellers whose Don Ed Hardy auctions had been taken down. “Some sellers who had not yet actually sold any Don Ed Hardy goods were told by the fraud department that ‘test purchases’ had proven their goods were counterfeit,” the reader wrote. “Some were told that it didn’t matter they could prove their merchandise was authentic – Don Ed Hardy would continue to take down their listings via VeRO by citing ‘violation of a trade agreement’ between the company and its distributors. And all were threatened as I was with trademark litigation that could result in treble damages, paying their legal costs, etc.”

But the threat of running up legal fees with trademark lawsuits isn’t just felt by individual EBay sellers; even large companies — like ABC television — are afraid to fight ridiculous claims of trademark infringement:

“Sam I Am” isn’t—anymore.

The planned ABC fall comedy starring Christina Applegate has changed its name to “Samantha Be Good” after receiving a “cease-and-desist” letter from lawyers representing the rights-holder to Dr. Seuss characters, an attorney said Tuesday.

[...]

“We asserted a trademark infringement claim,” in a May 17 letter to ABC, said Jonathan B. Sokol, an attorney representing San Diego-based Dr. Seuss Enterprises, LP.

“People worldwide associate those characters with Dr. Seuss books and … Dr. Seuss vigilantly protects its trademark rights,” Sokol said.

The TV show’s original title might have confused people as to whether the company was sponsoring or otherwise involved with the program, Sokol said.

This is just a guess, but it’s unlikely that someone watching a sitcom in which Christina Applegate has amnesia is going to confuse it with Green Eggs And Ham, a book in which a cartoon character tries to entice another cartoon character to eat unkosher food with classic lines like “Could you, would you, with a goat?”

{ 7 comments }

1 Xrlq 06.27.07 at 12:22 pm

I have to side with the ghost of Dr. Seuss on this one. Perhaps my views on Christina Applegate have been unfairly tarnished by the character she played on Married With Children, but I have an uneasy feeling that she would, she could, with a goat.

2 RVB 06.27.07 at 7:25 pm

More and more companies are using the Ebay VeRO program to take down auctions – and doing so simply because they can.

These companies are ignorant – or choose to ignore – the doctrine of First Sale.

I would direct you to http://www.tabberone.com/Trademarks/trademarks.html.

Tabberone is someone who sells items on the Bay and has had auctions pulled. She has taken on, in Federal Court, the likes of Disney, Major League Baseball, M&M Mars and a host of others, mostly Pro Se, and had her auctions reinstated with the companies backing down.

3 ben tillman 06.27.07 at 9:34 pm

“I have to side with the ghost of Dr. Seuss on this one.”

I’m inclined to agree. As for the eBay listings, are we not looking at tortious interference with contract?

4 David Nieporent 06.28.07 at 9:37 am

Hey, I’m a bigger fan of Dr. Seuss than Kelly Bundy too, but I find it hard to believe that there’s any confusion here. Or dilution.

I’m inclined to agree. As for the eBay listings, are we not looking at tortious interference with contract?

Your question is ambiguous. Which contracts are you arguing was interfered with? And by which party?

5 Ron Coleman 06.28.07 at 12:04 pm

I see the Dr. Seuss estate’s problem, but is a book title a trademark? I’m quite sure it’s not — see the “Fred and Ginger” case.

6 ben tillman 06.28.07 at 11:33 pm

There’s a contract between eBay and each person who sells thins on it.

7 ben tillman 06.28.07 at 11:35 pm

Or “things”.

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