Online magazine article using my trademark to identify a competitors product

[lovethepirk]

There is a company using my trademark heavily in social media and word of mouth, nothing on their website or set in stone yet...but clearly infringment.

I am preparing a letter to the company to ask them kindly to stop and remove all references.

In the last month, due to the social media posts and word of mouth, an online magazine has written 3 articles stating there is a new product being used in commerce and they state it is called the "XYZ widget".  I own the trademark "XYZ widget".

Do I have the legal right to force the online magazine to remove the article or is there some fair use issue they can use to keep the article up.

Thanks.

[Robert T Nicholson]

From what you have stated, this is a clear case of misuse of your trademark, and violates your trademark rights.  It also has a very real potential to damage or dilute your brand.

I recommend you consult a trademark attorney to discuss the case specifics, and what recourse you may have.  I also recommend that you NOT send a letter on your own.  If you end up in litigation, communication from you may be used to weaken your case. 

[lovethepirk]

Art,

Thanks for the feedback...I'm gonna contact an attorney next week, thanks for the warning against me sending my own communication.

What is the deal with the articles that have been written...I don't fault the magazines for printing the articles stating that a competitor is bringing a product to market with my trademark name.  They just basically are writing articles on the facts they have and see.  Given that do they have the responsibility to remove them from circulation on the internet if I ask them to?  Obviously the offending company has issues they need to resolve, but what liability does the magazine have to correct the pathway they went down which obviously they were mislead by the offending company?

thanks.

[Robert T Nicholson]

In general, the person or company that commits the offense (violating your trademark rights) is responsible.  If you were to sue the magazine, they would in turn sue the company that provided the false information.

Often the amount of money that you could recover would be less than your legal costs, especially with small companies.  But the options, costs, and potential upside are something to discuss with an attorney.  At a minimum, you should be able to scare the hell out of the magazine and the manufacturer, get all offending materials removed from the Internet, and make sure they never due this again.  You may be able to get a retraction and some very positive coverage from the magazine for your own products to avoid a lawsuit.

[MYK]

Do I have the legal right to force the online magazine to remove the article or is there some fair use issue they can use to keep the article up.

The magazine would probably choose to update the article.  Do you think the company that is using the identical trademark is aware of yours, or are they simply clueless?

[lovethepirk]

I'm not sure if they are clueless, but they certainly are not smart, they are large and I am small.  They have not made anything official other than on social media from employees and some strong word of mouth that I've even heard of personally.  It got real for me when the articles came out. They are using a design very similar to mine but it's not protected nor would it be able to.  I'm gonna work on finding an attorney for this tomorrow.

Thanks.