Articles Posted in Trademark Law

In trademark cases involving keyword advertising, the nominative use defense is often a powerful tool that leads to early success on summary judgment.  We recently had a case where we represented a payment processor review site.  At issue was whether or not a review site is able to advertise by purchasing trademarked terms on Google Adwords.  In this post, we will run through the analysis and ultimate answer.

Where a trademark claim arises from the use of a trademark as a reference to mark owner’s goods or services such as a review site, the case is among a “class of cases where the use of the trademark does not attempt to capitalize on consumer confusion or to appropriate the cachet of one product for a different one” and the plaintiff’s claims fall to the doctrine of “nominative use.”  New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302, 308 (9th Cir. 1992).

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E-tail behemoth Amazon recently filed a lawsuit against Jay Gentile, a California resident offering positive Amazon reviews for a price, otherwise known as “astroturfing”.  Gentile offered his service via the domain name “buyazonreviews.com”, among others.  Here is how the operation worked in a nutshell:  Mom and pop widget company desires four and five star reviews in order to increase consumer confidence and sales; Gentile’s service provides the widget seller with canned 4 and 5 star reviews over a period of months, so that the reviews appear legitimate and avoid Amazon’s review screening filter; and the reviews cost mom and pop about $20 per review.  Gentile’s company even went so far as to allegedly orchestrate phony baloney sales in order to achieve “verified” review status.

Quite naturally, Amazon isn’t too happy about all of this.  Consequently, Amazon deployed one of its go to law firms to attack Gentile in Court.  The problem is, I’m not too sure that Amazon’s lawsuit is legally viable, however, it does have significant strategic and practical value.  Because of this, I think it is likely to serve as an astroturfing deterrent.

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World Wrestling Entertainment (“WWE”) has serious problems at many of its events.  It seems that purveyors of WWE counterfeit merchandise set up shop at or near event locations. As such, the WWE loses a number of lucrative merchandise sales at events.  The problem facing the WWE has been how to stop such nameless, faceless counterfeiters who typically evade detection or enforcement consequences.  With scant resources, many local police departments are not willing or able to provide the type of “boots on the ground” enforcement required to stamp out sidewalk counterfeits.

So how does a brand owner succeed against shadowy, anonymous wrongdoers?  The WWE took the novel approach of seeking an ex parte temporary restraining order and seizure order against future, unnamed counterfeiters.  This is highly unusual in that most trademark enforcement actions are reactive and backward looking in that they seek to redress wrongs already committed.  Certainly, in the online trademark infringement context, relief is routinely granted against anonymous “John Doe” defendants. In such cases, however, there is existing admissible evidence of the infringements.  And typically such infringement is rectified easily via a seizure of the very domain names used to perpetrate the anonymous counterfeiting.

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