<i>&gt;FYI - You need to know that "Webvertising" is a registered</i>
<i>&gt;trademark - look it up! I discovered this - I have a pending</i>
<i>&gt;registration for "Webbified Advertising" (TM) and was</i>
<i>&gt;notified by the US PTO that there is a similar mark</i>
<i>&gt;("Webvertising" TM), but that such would not stop my</i>
<i>&gt;registration.</i>
<i>&gt;I would advise that you discontinue use of both of these -</i>
<i>&gt;failure to do so could result in severe US Federal consequences!</i>
Tom:
When I responded to you in private last week, I thought this matter was
resolved. Obviously, I must now respond again.
As I noted previously to you in private, it is my position, and the position
of several trademark attorneys I have discussed this matter with, that the
mere use of someone's trademark (even with federal registration protection)
as a title of a scholarly (not, commercial) work would not likely be an
infringement of the "Webvertising" trademark. The "Webbified Advertising"
mark is even less of a concern.
As I am sure you know, the key test in U.S. trademark law, is whether the use
of another's mark would cause there to be likelihood of confusion as to the
source of the goods or services in question.
Here there can be no confusion about the source of any goods or services. I
was merely writing about advertising on the Web, without reference to any
particular goods and services, least of all my own. No one would be confused
into thinking that the owners the marks you refer to were the source of my
article.
In addition, it seems questionable to me, notwithstanding your pending
Federal registration, that your mark would have "secondary meaning" such it
would be enforceable as you infer. If you are merely seeking a test case on
this issue, I would look for a better set of facts.
Moreover, I could go on for days (and I am sure the list would be properly
bummed) about the First Amendment ramifications of your threat. Under your
regime, most newspapers would be unable to discuss their subjects if (heaven
forfend) they used Federally-registered trademarks in the titles. Of
course, a simple review of Nexis will show you that "webvertising" has
already been used extensively by the media.
I trust this issue will bounce around for a while and that you will feel
compelled to defend your mark. Please save the list members from having to
endure a silly fight between two lawyers. Respond in private.
Andrew Gelman, Esq.
New Media and Marketing Attorney
Friedberg &amp; Gelman
149 Fifth Avenue, 7th Floor
New York, New York 10010
212-323-7981 (tel) 212-253-9146 (fax) MMediaesq@aol.com
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