Trademark bullies

[emckean at ENTERACT.COM]

Perhaps you could do what most major dictionaries do and put in a
disclaimer that no judgment should be made as to the actual legal status
of any word on your site? This way, you're not saying that a word isn't a
trademark if you don't happen to brand it with the little "TM".

I feel that, the importance of trademarks in the commercial world aside,
most of these calls are made by junior lawyers looking to pad their
billable hours.

Erin McKean
editor at verbatimmag.com


On Fri, 10 Mar 2000, Paul McFedries wrote:

> Sorry for this not-quite-on-topic message:
>
> A few months ago, I sent out to my Word Spy list a word that many
> publications -- including Consumer Electronics, The Boston Globe, Newsweek,
> and The New York Times -- have been using as a generic term for the past
> year or two. (For legal reasons, I'm being deliberately vague.)
>
> A couple of days ago, someone from a company that uses the same word as
> their corporate name wrote to me and said they had seen the word on my Web
> site. He said  the word is a company name and is "not a term of art." He
> asked me to "do us a favor and do not promote our name as a term of art."
>
> I wrote him back and gave him the usual spiel about the nature of language
> change and how some trademarks can also be used as generic terms. The same
> principal applied here, I said, since I've seen the word used generically by
> a number of different publications.
>
> He responded by reiterating that the term is a trademark and closed by
> saying "Again, I ask, and recommend, that you respect its status as a
> trademark in your publications."
>
> I'm not so dense that I don't see the implicit threat in this
> recommendation. So I'm wondering what my options are here. I don't want to
> cave in to this "trademark bully," but I don't want to be sued, either. I
> believe all he wants is for me to include with my entry that the word is
> also a registered trademark. I know dictionaries acknowledge trademarks, but
> Word Spy isn't a dictionary; it's just a humble little record of the new
> ways that people are using the language.
>
> I know next to nothing about trademark law, so if anyone has any advice, or
> can point me to a good source, I'd be very grateful.
>
> Paul
> http://www.wordspy.com/
>