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 Chilling Effects Clearinghouse > Trademark > Notices > You Can't Keep Your Recipes with my Ads (NoticeID 146048, http://chillingeffects.org/N/146048) Printer-friendly version

You Can't Keep Your Recipes with my Ads

September 26, 2011

 

Sender Information:
AdKeeper
Sent by: [name redacted]

[address]

New York, NY, 10016, US

Recipient Information:
[name redacted]
KeepIdeas, Inc.
[address]

New York, NY, 10009, USA


Sent via: Email & FedEx
Re:

I am writing on behalf of AdKeeper Inc. ("AdKeeper"). AdKeeper(TM) offers a service whereby consumers can Keep(TM) online advertisements by clicking on the KeepButton(TM) that appears on participating brands' online advertisements. Consumers Keep these online advertisements in their Keeper(TM), a digital vault that allows consumers to save and view the advertisements that the consumers Keep. AdKeeper allows consumers to be in charge of online advertising.

AdKeeper's service has been highly publicized, with feature articles appearing in the New York Times, the Wall Street Journal, Forbes, and AdWeek. Moreover, AdKeeper has partnered with major brands, such as Ford, General Mills, JetBlue, and Pepsi, to participate in the AdKeeper service.

AdKeeper has been using the AdKeeper, Keeper, KeepButton, Keep, Keeps, and stylized K marks (the "AdKeeper Marks") in connection with services enabling online users to store, view, sort, share, rank, review, and print advertisements since October 2010, and has several pending trademark applications before the United States Patent and Trademark Office. Significantly, it has been using its stylized K mark, as set forth below, for those same services since October 2010:

[image of claimed mark]

Based on AdKeeper's widespread use of the AdKeeper Marks, that mark has become widely recognized as identifying AdKeeper's unique services.

It has recently come to our attention that Keepldeas, Inc. ("Keepldeas") is using the name Keep Recipes, the domain name KeepRecipes.com, the word Keep, and a stylized K (the "Infringing Names") to offer services whereby consumers can retain recipes in a digital vault. The services offered by Keepldeas clearly overlap with the services offered by AdKeeper under its well-known AdKeeper Marks.

Plainly, your company has chosen a name confusingly similar to the AdKeeper Marks in order to take advantage of the brand equity that AdKeeper has developed for virtually similar services. Specifically, the stylized K that Keepldeas uses is virtually identical to AdKeeper's stylized K and offers the same exact functionality - clicking on it allows consumers to retain items from the web. Keepldeas' actions are intended to and will undoubtedly cause consumer confusion about an affiliation or connection between Keepldeas' business and AdKeeper.

Keepldeas' use of the Infringing Names in association with its digital retention services will undoubtedly cause consumers to be confused and to believe that Keepldeas is somehow associated or affiliated with AdKeeper. This constitutes blatant trademark infringement, misdesignation of origin, and false association in violation of § 43(a) of the Lanham Trademark Act and violates various state unfair competition, and misappropriation laws.

AdKeeper hereby demands that Keepldeas confirms to us that it will immediately: 1) cease and desist from using the Infringing Names; 2) cease and desist from using any name that infringes our rights, including ali inames that contain the term "keep" or otherwise are confusingly similar to AdKeeper Marks; and 3) cease use of the infringing domain name, KeepRecipes.com, and agree not to register any other domain name that includes the term Keep.

Please be advised that if AdKeeper has not received acceptable confirmation of Keepldeas' compliance with the foregoing, AdKeeper will take all appropriate steps to protect and enforce our rights, including, if necessary, commencing legal action and pursuing all appropriate remedies, which may include injunctive relief, claims for compensatory and exemplary damages, attorneys' fees, an accounting of your revenues from Keepldeas' use of the AdKeeper Marks, and all costs associated with AdKeeper's claims.

This demand is without prejudice to all of AdKeeper's rights in this matter, both legal and equitable, all of which are specifically and expressly reserved.

Sincerely,

[redacted]

Vice President, Legal and Business Affairs

 
FAQ: Questions and Answers

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Question: Does the product or service on which I am using the mark matter? Do dates matter?

Answer: It matters if the mark is not famous. The C&D should disclose your opponent?s products and/or services and the date on which it commenced use of the allegedly infringed mark. This will help you guesstimate whether a likelihood of confusion between the marks exists. For instance, if your opponent uses ?opera? on truffles and you use "opera" on silk gloves, consumers are not likely to confuse the products. If the mark is determined by a court to be famous, however, confusion is irrelevant and [non-fair] use on any type of goods may be an infringement.

The date on which your opponent began using the mark is significant because a junior (later) user cannot displace a senior (first) user in the senior user?s geographic region. In other words, if you have owned a chain of donut shops called "Lucky Donuts," with locations in New Jersey, New York, and Connecticut since 1943, a national chain called "Lucky Donuts" founded in 1979 has no trademark infringement claim against you in the NJ-NY-CT tri-state area. If your opponent has begun using its allegedly infringed mark after your use, you have another reason to question the merit of the C&D.


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Question: How do I register a trademark?

Answer: There are three ways to register:

  1. file a use application, which lets someone who is already using the mark register it,
  2. file an intent to use application, which states that you honestly intend to use the mark in commerce. The mark must be associated with commerce, instead of simply being a mark that you want to reserve. Merely using the mark in advertising or promotion does not qualify under this category -- the use must be associated with an actual commercial purpose, or
  3. (non-US applicants only) file based on an existing foreign registration.
All applications require a fee. Remember that it is not necessary to register a trademark to gain protection in the United States.

Four months after registration, the trademark application is examined by an attorney at the PTO. The attorney determines whether the mark is registerable. If not, the applicant receives a letter stating the grounds for refusal and information on needed corrections (if applicable). If the attorney requests additional information, the applicant has six months to respond; after six months, the application is deemed abandoned.

The most common reason for being unable to register is that the mark is confusingly similar to an existing mark. If the attorney finds a conflicting mark and cannot grant the application, the PTO does not refund the application fee.

If the mark can be registered and the application passes, the attorney approves the mark for publication in the PTO


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Question: What facts should a C&D include?

Answer: Recitation of Facts. Read this section of the letter carefully. It should contain some or all of the following information:
(1) the trademark that is allegedly being infringed;
(2) the trademark, domain name or other use that is allegedly doing the infringing;
(3) the products and services on which your opponent uses the allegedly infringed mark;
(4) the date your opponent commenced such use; and
(5) the registration numbers, if the trademarks are registered with the Patent & Trademark Office.


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Question: What about common words that are used for many purposes?

Answer: Common words and alphabetical letters can be protectable trademarks if they are used in arbitrary or unusual ways. One cannot trademark DIESEL to sell that generic type of fuel, otherwise no other diesel fuel dealer could use the word to identify the product. However, one could trademark DIESEL as a brand of ice cream. The owner of the ice cream mark can't use its rights to prevent fuel dealers from using the word on their station pumps nor can it prevent anyone else from using the word for non-trademark purposes, such as a website listing diesel fuel dealers.

In general, the more a mark describes the good or service that it labels, the less strong the trademark protection it gets and the more freedom others have to use the same word for other purposes.

See also this question on the strength of trademarks.


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Question: What is the bare minimum of trademark law that I have to understand to decipher this C&D?

Answer: Your opponent should say that your mark is causing consumer confusion or is likely to cause consumer confusion. Or it should mention it's famousness and complain of dilution or tarnishment. (If the C&D does not say this, then no trademark claim may actually exist, and you can rest assured that your opponent is engaging in scare tactics or has hired a highly incompetent attorney). A mark protects more than identical copying, it extends to anything that is confusingly similar, even if it isn't exactly the same.

Functioning in a quasi-magical talisman-like capacity, trademarks designate the source or quality of goods or services. For this reason, the law protects against confusion in the market place by ensuring that marks on the same or similar products or services are sufficiently different. The law also protects famous marks against dilution of value and tarnishment of the reputation of the goods or services on which it appears or the source of those products, regardless of any confusion.

You can roughly assess the validity of your opponent?s claim of confusion by classifying the marks involved. A trademark can fall into one of 5 categories. It can be: (1) fanciful; (2) arbitrary; (3) suggestive; (4) descriptive; or (5) generic. Not all of these varieties of marks are entitled to the same level, or indeed any level, of trademark protection.

A fanciful mark is a mark someone made up; examples include KODAK or H?AGEN-DAZS. An arbitrary mark is a known term applied to a completely unrelated product or service; for instance, AMAZON.com for an online book-store cum one-stop shopping site or APPLE for computers. Fanciful and arbitrary marks are considered strong marks and garner substantial trademark protection.

A suggestive mark is one that hints at the product, but which requires an act of imagination to make the connection: COPPERTONE for sun tan lotion or PENGUIN for coolers or refrigerators are examples. Suggestive marks are also strong marks and receive protection.

A descriptive mark, predictably, describes the product: HOLIDAY INN describes a vacation hotel and FISH-FRI describes batter for frying fish. Descriptive marks do not receive any trademark protection unless their user has used them in commerce and has built up secondary meaning. "Secondary meaning" occurs when consumers identify the goods or services on which the descriptive term appears with a single source. In other words, if consumers know that HOLIDAY INN hotels are all affiliated with a single source, then the mark has secondary meaning and receives trademark protection.

Finally, generic marks simply designate the variety of goods involved: for example, "cola" used on soft drinks and "perfume" on perfume are both generic terms. Generic marks never receive any trademark protection; they are free for everybody to use. (Keep in mind, though, that "Cola" on a nightclub is arbitrary, and therefore receives protection).

If your opponent is complaining that you have used the word "bakery" for a bake shop or "car" for a car repair shop, then you can safely guess that the c & d is baseless. On the other hand, if your opponent is concerned about the fact that both of you use of the term "Sweet Pickles" on alpaca sweaters, then the c & d may have some merit.

There are a few more wrinkles as well. Some marks are word marks (text only) and others are design marks (images which may or may not include text). Design marks do not provide independent protectin for the text incorporated in the design. So if the mark is only a design mark, it doesn't prevent others from using the text so long as they don't copy the design elements.


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Question: What implication does alleged confusion have on claims of trademark infringement?

Answer: A mark that is confusingly similar so closely resembles a registered trademark that it is likely to confuse consumers as to the source of the product or service. Consumers could be likely to believe that the product with the confusingly similar mark is produced by the organization that holds the registered mark. Someone who holds a confusingly similar mark benefits from the good will associated with the registered mark and can lure customers to his/her product or service instead. Infringement is determined by whether your mark is confusingly similar to a registered mark. The factors that determine infringement include:

  • proof of actual confusion
  • strength of the established mark
  • proximity of the goods in the marketplace
  • similarity of the marks? sound
  • appearance and meaning
  • how the goods are marketed
  • type of product and how discerning the customer is
  • intent behind selecting the mark
  • likelihood of expansion in the market of the goods


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Question: What is Section 43(a) of the Lanham Act?

Answer: The Lanham Act is the basic federal trademark and unfair competition law. Section 43(a) (15 U.S.C. 1125(a)) is intended to protect consumers and competitors against false advertising and false designations of origin.

The law allows for suit against someone who makes false claims about its own or a competitor's products.


Sec. 1125. False designations of origin, false descriptions, and dilution forbidden

(a) Civil action

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which--

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or

(B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.


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Question: I have an unsettling feeling in the pit of my stomach about the tone of the C&D I received. Does the tone of the c & d mean I am going to lose this dispute?

Answer: "Gorilla Chest Thumping" refers to the tone of most C&Ds: it?s nasty. The first thing to do is take a deep breath. The second thing to do is to acknowledge that the tone of the letter is a function of the letter writer?s perception that aggression is the best defense: do not take it personally. The third thing to do is ignore the tone and focus on the facts. You may eventually choose to respond aggressively yourself, but do not do so because your opponent has egged you into a useless game of whose gorilla is bigger. Take a tip from Ani Di Franco: "If you play their game, girl, you?re never gonna win." Face Up and Sing, Out of Range, Righteous Babe Records (1994).


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Question: What is this laundry list of things the C&D says will happen if I don't obey?

Answer: Your opponent may describe a parade of horribles to demonstrate with exquisite detail what it will do to you unless you capitulate. This list generally includes, but is not limited to:
(1) ceasing use of the allegedly infringing mark or surrendering the domain name;
(2) rendering an accounting;
(3) posting corrective advertising;
(4) obtaining an injunction;
(5) recovering costs and fees.

Though these things sound awful, they are not medieval tortures (although that may be a function of the fact that Torquemada never thought of them).

Ceasing use of the mark is self-explanatory: your opponent wants you to stop using the mark. Your opponent might also ask you to surrender your domain name if they believe the domain name causes (or is likely to cause) confusion with their trademark. For example, under ICANN rules (the UDRP), you may have to surrender your domain name if the following three conditions are satisfied:
(1) your domain name is identical or confusingly similar to your opponent?s;
(2) you have no legitimate right or interest in the name (in other words, you are not using the name to conduct a bona fide business or for non-commercial fair use purposes); and
(3) your name is registered and used in bad faith.

An accounting basically means that you disclose the following information to your opponent:
(1) the date you began using the allegedly infringing mark;
(2) the names of individuals who knew of the use when it began;
(3) the amount of traffic at your web site or business at your store; and
(4) your profits and revenues during the time you used the allegedly infringing mark.

Corrective advertising means you give notice to the public that you were using a mark confusingly similar to your opponent?s, and that you are not affiliated with your opponent.

An injunction is a judicial order to do something. An injunction can prevent you from using the allegedly infringing trademark.

Some provisions of the Lanham Act permit a trademark holder to recover attorney?s fees and court costs from an infringer.

That your opponent has listed these various remedies does not mean that it is entitled to them; do not confuse the smorgasbord of legal options with your opponent?s right to inflict any of them on you.


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Question: What does the "reservation of rights" language mean? What are they "waiving" at me?

Answer: Many C&Ds will say something like, "This letter shall not be deemed to be a waiver of any rights or remedies, which are expressly reserved." This is just legalese for saying, "Even if you do what we ask in this letter, we can still sue you later." The language is standard; do not be alarmed. Litigation is extremely unpleasant, and unless your opponent is irrational (always a distinct possibility, of course), it will not bring litigation after it has obtained what it wants.


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