Trademark Infringement

Trademarks are a legal construct that protects the right of an organization to use a distinctive sign, name, etc., to identify its products and services to customers. The idea behind this is to prevent confusion within the marketplace between one product and another or dilution of that particular trademark. Trademarks usually govern the use of names of products or services, but are also sometimes associated with phrases, logos, symbols, etc.

In operating a site hosted with North Florida Web, you must ensure that you are not infringing upon anyone’s trademark.

North Florida Web does not allow customers to engage in trademark infringement. That does not mean that you can’t use trademarked terms at all, but rather that you cannot use them in a manner that could reasonably confuse the marketplace. Nominative use of trademarked terms — such as for criticism or analysis — is generally protected under the First Amendment of the US Constitution.

Because trademark law is rather complicated, North Florida Web is unable to give prior approval to or otherwise pre-judge whether or not your intended purpose would be considered legal under the law. Each complaint is handled on a case-by-case basis in cooperation with North Florida Web’s legal counsel. North Florida Web does reserve the right to disable any site/account if there is reason to believe that infringement is indeed occurring. Clear cases of willful infringement — such as that associated with fraudulent phishing sites — will result in immediate disablement.

As such, if you plan to use a trademark in a manner that you believe may not be approved of by the trademark holder, it’s highly recommended that you seek the guidance of qualified intellectual property counsel before proceeding.

If you believe that your trademark is being infringed upon by a North Florida Web customer, contact North Florida Web. Please read the following before submitting your complaint.

Reporting a trademark infringement to silence a critic

North Florida Web receives a fair number of trademark complaints that are clearly intended to silence a critic who is engaging in Constitutionally-protected free speech. In absence of a cogent explanation as to how the use of a trademark in such cases violates trademark law (referencing any supporting case law), it is very unlikely that North Florida Web would act to remove such a site.

One common example are websites created to critique a company. For example, thiscompanyisawful.example.com. These are created with the intent to speak out against perceived shoddy products or services from a given company. Typically, the use of trademarks in such domain names is protected under fair use (cite: Taubman Co. v Webfeats, Sixth Circuit Court of Appeals).

As long as someone isn’t engaging in libel, this sort of speech is legally protected.

Infringement with a domain registration

North Florida Web is a domain registrar as well as a web host. If the infringement you have identified is in the form of a domain registered by North Florida Web, you need to file a formal UDRP (Uniform Domain-Name Dispute-Resolution Policy) complaint with ICANN. It is not necessary to send North Florida Web a complaint directly.

Where do I send my trademark infringement complaint?

If you believe that trademark infringement is occurring in conjunction with a North Florida Web hosted site, contact North Florida Web. Make sure to provide any applicable trademark registration numbers, as well as a reasonable explanation of where the infringing usage can be found and why you believe it constitutes trademark infringement (and does not fall under trademark fair use doctrine). Except in the most egregious of cases — such as fraudulent phishing sites that make use of the name and logo of a bank — North Florida Web will likely run whatever you send by its legal staff for review before taking action.

You may send your complaint to the following email address:

• abuse@northfloridaweb.net

Please include your complaint within the text of the message — not as an attachment.

It didn’t have a trademark symbol, is this trademark infringement?

While the trademark symbol (either “™” or “®”, depending on whether the trademark is registered) is often placed next to trademarked items, it is not required nor necessary in order to enforce the trademark. Its absence should not be seen as a sign that a trademark is not valid or registered.

I am just commenting on their product or service, is this trademark infringement?

Generally speaking, the use of a trademark in the description of, criticism of and/or analysis of an organization, product or service is protected as trademark fair use. What constitutes fair use under trademark law is somewhat complicated, so North Florida Web must reiterate that if you have any confusion as to whether or not your own intended use is legally protected, you should consult with a qualified intellectual property attorney.

What is the difference between copyright and trademark?

Copyright and trademark law are quite different.

Copyright law governs the distribution rights of creative works, generally restricting their use to the copyright holder (except those uses which fall under fair use doctrine). Copyright law is designed to ensure that the creator of a work is able to decide under what terms it is distributed. Trademark law, in contrast, governs the use of words, symbols, phrases, etc., which pertain to the identity of an organization, product or service. Trademark law is designed to ensure that confusion and/or the dilution of a brand does not occur.

As an example, the contents of a book — any prose or pictures contained within it — would be protected under copyright law. The title of the book or the name of the book store you purchased it in would be protected under trademark law.