Trademark issue: using common descriptive terms?

Hello,

I have a situation and would be happy if anyone could give me some advice.

I own a website where I offer people free software for download. One piece of software is used for managing reciprocal links between websites and it is called "LinkMan". Since the software is free I heavily depend on search engine optimization (SEO) to get visitors. That's why I use phrases like "Link manager" and "reciprocal links manager" on the page to get better search engine position for these terms and in return receive visitors who are searching for link management software.

I am also affiliated with "linksmanager.com" and have an affiliate link to their website on the page where I distribute "LinkMan". They have contacted me explaining they own a registered trademark on "linksmanager" (http://tarr.uspto.gov/servlet/tarr?...&entry=75909722) and are asking me to remove "link manager" words from my site. Here is exactly what they said:



I believe "link manager" are common descriptive terms for a particular kind of software (for managing links between websites) and are not distinctive of them (if you do a Google search for "link manager" you will find dozens of software (even commercial) and you won't find linksmanager.com on the first 5 pages of results (didn't look further)). I also don't use "linksmanager" anywhere.

They (linksmanager.com) are threatening with legal action unless I do what they ask (they even want "link-manager" removed from the page URL!).

Any suggestions? Am I right or are they? Should I just go and remove everything?

Thanks for any help you can provide!

they certainly have high expectations. I wonder if they also go after the others you've found.

do they present the words link manager anywhere on their site with "sm" "tm" or anything like it after the words?

what "legal action" are they threatening? ICANN does the dispute rulings on urls. three points must be met by the complainant before a url can be forfeited.

do they participate in any webmaster forums?

I'm confused. Aren't the references "related to specifically promoting LinksManager.com"? So you're complying. I don't get it. I must get a coffee and reread.

I can see a problem with using "linksmanager" for purposes other than promoting them, but any other spelling or division into separate words ought to be fair game.

and was it their lawyer on his stationery or just an email that advised you of this?

If they have a registered trademark on that phrase in that context, they probably have the legal grounds to enforce it. You might want to talk to an Intellectual Property attorney.

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Hi,

Thanks for the replies so far. Few more details to make things clearer:

I wrote my own software (FREE) that manages reciprocal links, it's called "Linkman". But I use "link manager" and "links manager" for SEO. On that page there is also a link to linksmanager.com. The term "linksmanager" is used only once - that is in an affiliate link to linksmanager.com (CJ). I don't use the terms "linksmanager" or "linkmanager" and you won't find my URL if you search for these two terms.

The "funny" thing is I am promoting them and I contacted them with some questions about their affiliate program and they replied with the don't use these words e-mail. It wasn't from an attorney.

Here is the page in question:
http://www.phpjunkyard.com/php-link-manager.php

Thanks

So where you use the term you are promoting them and acccording to their rules that's ok.

What a way to treat an affiliate. They could go after the 162,000 Google citings of "linksmanager" but instead wait for an affiliate to approach them and dump this on you?

I would sign up with their competition and drop these clowns or better yet - make a pro version of your own product and sell it for 100% commission. Oh and start an affiliate program for it too.

Cheers,
Peter

@asr_guy - you are 100% right. I will definitely drop their program if they continue to forcing me to remove "link manager" from my website and probably write my own software with more and better features as their. And start an affiliate program

I would take them off your site but i don't see a problem using link manager or links manager because that is what your software does. They registered LINKSMANAGER, both words being together. Doing a google search on link manager:

http://www.google.com/search?source...link+manager%22

There are all kinds out there. And those are general terms.

The main argument in any trademark case is "consumer confusion". If there's any way consumers would reasonably confuse your product with the trademarked product based on you using a "confusingly similar name", you need to be careful.

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Michael Coley ABestWeb.com Admin and Amazing-Bargains.com Founder

Merchant Training 101:NEW! NY Tax Solution | Get The Most Out of ABW | Merchant Best Practices Forum | Affiliate Friendly Policies | A Practical Guide to Affiliate Marketing book | Couponing Tips | How Adware Works | My Opinion of CPA Networks

MichaelColey-The main argument in any trademark case is "consumer confusion". If there's any way consumers would reasonably confuse your product with the trademarked product based on you using a "confusingly similar name", you need to be careful.


Michael is right, you need to be very careful with this. Unless you have the means to fight this you could find yourself in hot water. In my earlier naive days I boned up and had Microsoft after my

Decide if it's worth the trouble. Good luck!

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Travelin' Man

"If you don't know where you are going, any road will lead you there." -- unknown

They trademarked Linksmanager not links manager.

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HardwareGeeks.com

My Trust in ShareaSale has gone *POOF* (add this to your sig to protest)

Take your neck off the chopping block.

Even if their case did not have any merit (though it very well may), the simple fact that you got the letter indicates that the law firm will pursue the matter anyway, even if just to generate a billable for a deep-pocketed client.

Just ditch 'em and use some contorted language to say the same thing. Instead of "Link Manager Software": "Links Management Software" or something like that.

"The "funny" thing is I am promoting them and I contacted them with some questions about their affiliate program and they replied with the don't use these words e-mail. It wasn't from an attorney."

I don't think it was a letter from an attorney but a reply email from the affiliate manager. Or was it a letter from an attorney?

No, it was reply from the affiliate manager and not an attorney. And I am sure 99% people searching for "link manager" are not searching for THEIR linksmanager, but for A link manager. Like you said TrustNo1, searching for "Link manager" returns all kinds of link managers (not their linksmanager though!). And my script is named LinkMan, "link manager" is used merely to describe what the script does (manage links).

I could simply change all the words but the thing is the search term "link manager" gets about 70% of the SE traffic.

I'm not a lawyer but i don't see a problem with it. It's what your script does so it's appropriate to call it a link manager just like all the other sites are doing from the google link i posted.

I agree with Trust. If your software is a link manager, they will have a hard time enforcing it. There is a big difference between linksmanager and link manager. One is an everyday phrase, one is not.
You might be forced to hire an attorney to represent you to make your point. You need to do a cost/benefit analysis before you go any further. A phone call and a calm, reasonable conversation with their AM might also be a good start.
Best of Luck!

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This is an interesting one. It seems reasonably clear that they could not successfully sue you for trademark infringement for using the phrase "Link Manager" -- it is clearly a descriptive term, and indeed I doubt their trademark for "LinksManager" would hold up in a genuine legal contest.

However, they certainly have the right to impose conditions on participation in their affiliate program, so they probably can boot you out as a paid affiliate, and depending on what their contract says, they might even be able to sue you for breach of contract. (Good news: when I just checked the CJ web site, I can find no mention of any special terms & conditions for LinksManager.com.)

tell them you have the word "the" trademarked and you hired a laywer because you seen it on their site.

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It's a descriptive term that they were granted a trademark for use of for that specific type of product. They could prevail if it would cause any confusion with another similar product, one of the same type.

Like you could use Delta Delicatessan or Delta Dairy, but not for an airline or closely connected industry that could be confusing, and not for faucets or related plumbing products - it would also be confusing.

If the words are trademarked and used in any way that could cause consumer confusion with the product of the trademark holder, they can't be used. You could use link manager for sausage links or chain link fences - different type of products - but not in connection with anything in the same product line or market as theirs.

Very good explanations that are easy to understand at www.chillingeffects.org

The URL you gave me webworker is great! Especially this part:
http://www.chillingeffects.org/trademark/faq.cgi

Thanks for all the replies, you all were very helpful.

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Help desk software

I feel your pain! Registered trademarks are getting so confusing that soon we won’t be able to say anything without stepping on somebodies toes. Some common terms are being registered so only one company can use them. Example: away from the computer I make candles and soaps. Some of the candles I make are “tart” candles. I can’t advertise them as tart candles because someone has trademarked the word “tart”.

What else can you call a tart? Here’s some of the suggestions my thesaurus gave me... Cyprian candles, cocotte candles, harlot candles, trollop candles, tangy candles, lady of pleasure candles, working girl candles, bawd candles. Can you imagine how high those names would rank on the SE's? Hey, it might give me some good keywords on the site, but the searcher would be very disappointed when they found candles instead of what they were looking for! Maybe I could make a new site and sell "dirty candles". Anybody here got any dirty candle molds for sale? LOL

I know what you are saying, although I hate all this legal cr@p it has really become a necessity for a merchant/affiliate to have at least some basic knowledge about legal stuf, especially the intelectual property laws.

Oh well, we live in a sue crazy world...

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