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[warrendekker]

I will use an analogy to demonstrate something I've seen happen many times on eBay.

A company invents a distinctive ukulele, with 2 necks.  It patents the invention, and trademarks the name "Acme Ukulele".  The company prospers.  Eventually, the patents have expired, and other companies want to get in on the 2-necked-ukulele business.

An upstart company starts making 2-necked ukuleles.  It wants to sell them on eBay.  So, for the subject line of its eBay auctions it says:


"New 2-necked ukulele, not an Acme Ukulele"

-or-

"New 2-necked ukulele, similar to Acme Ukulele"

The company does this, of course, hoping that when people search eBay for a used Acme Ukulele, they will find their  instrument as well.

Does this upstart company violate Acme's trademark in advertising its instruments in this way?  Of course, what the second company is doing, is not a nice thing to do, but does the upstart company run a real risk of being sued for trademark infringement for this?

I've seen this sort of thing go on, and was always curious.


Thanks,

Warren Dekker

[JimIvey]

I believe it's called nominative use.  It's actually a hot topic right now, from what I understand.  I think there's a very recent case on this topic.  

Remember, a trademark doesn't give you the right to exclude others from ever uttering your trademark without your permission.  It only reserves your trademark for use in describing your goods and/or services.  

What that means is that I should be able to say that my new Jimbo Cola tastes better than Coca Cola -- since I'm using the "Coca Cola" trademark to describe the Coca Cola product.  That's what the trademark is for -- an identifier for the purpose of identifying a source of goods and/or services.  Without trademarks, I'd have to say something like "my cola beverage that is made by me, Jimbo, is better than that other cola beverage made by the very large international corporation headquartered in Atlanta, Georgia."  

Now, trademark owners don't always see nominative use as harmless, and so often sue to stop nominative use.  They sometimes claim that the nominative use gives an impression of affiliation -- or just makes them look bad.

Now, to the specific point of the "not ..." trailer on ebay item title lines.  I understand what you're saying about it not seeming completely proper, but I see it as similar to what amazon.com does -- if you like this, you might also like that.  More like, others who looked at this bought that, or others who bought that, looked at this.  

Paid listings for Yahoo! and google sometimes get in trouble for doing something similar.  As an example, consider that Pepsi bids for high placement of their web site in response to searches for "coke" or "coca-cola".  Or that they put "coke, cocacola, coca-cola, coca cola," etc. in their metatags so they come up when searching any of those terms.  Google and, I think Yahoo! too, have been in court over those sorts of uses.

Frankly, I think trademarks serve their intended purpose when someone uses nominative use of another's trademark to make a product/service comparison.  It's a very useful thing if you're into competition and relatively free markets.

Regards.

[JSonnabend]

Jim's right that it's called nominative use, but I think he overstates the risk a bit.  For years now, comparative advertising has been widely used ("tastes better than Bud Lite" or "better gas mileage than a Chevy PetroGuzzler H2").  Saying "it's not an Acme uke" is closely akin to such advertising, I believe.  What's more, it's hard to imagine a less confusing statement than "we are not brand X".

Also, so far all indicators are that selling Google Ad Words on competitor marks is ok, but using the mark itself in a paid ad may be a no-no under traditional tm infringement analysis.

- Jeff

[Isaac]

Some practical, if anecdotal advice is that Ebay auctions get shut down fairly frequently on infringements allegations by trademark holders involving uses that appear (at least to me) to be fair or nominative.  

Sometimes being on the right side of the law is not enough to keep from being hassled by the man.  You might also want to consider Ebay's policies and terms of service in addition to what the law allows.

[JimIvey]

I think Jeff's right in his comment on my comment.  The ebay seller should prevail on the nominative use issue.  The impression I get from the IP news and case reports is that some trademark owners vigorously argue improper nominative use.  Even if the ebay seller prevails under proper application of the law, it's not free and painless to litigate these things.

In all fairness, the impression I have may not be accurate.  In the trademark forum, there are many here with more trademark experience than I have.

Isaac's point is also a good one (and one that is fairly closely related to mine): being in the right isn't always enough to avoid significant expense and inconvenience.

Regards.

[warrendekker]

Thanks to all for their kind responses to my question.

Warren

P.S.  Hmmm...a  'Jimbo and Rum'....sounds pretty good....maybe you've missed your calling, Mr. Ivey.

[tabberone]

What you don't mention is that this type of listing violates ebay's listing rules.

You are allowed one comparision statement within the listing, not in the title.

[warrendekker]

Mr Tabberone,

I have never sold anything on eBay before, so I was not aware of these rules.  I went to the eBay site, and you are correct...their rules are pretty clear, not allowing the kind of auction titles I mentioned in the original post.  

Warren

[tabberone]

MsTabberone - Karen

But that's ok, people seem to think I'm some Italian guy rather then using my cats name as a handle.