i-legions v. Leggio [1]

Rob Frankel of i-legions [2] sent an email to tech blogger Jennifer Leggio of ZDNet Feeds [3] complaining about a post [4] by guest author Aaron Strout [5] that used the term "branded communities." Frankel indicated [6] that i-legions owns a federally registered trademark [7] in the term "branded communities" and claimed that Leggio "should not be using the term at all without our express written consent."

Strout's July 23, 2008 post [4] functioned as a "primer" on what steps online businesses should take in evaluating their "community engagement strategies."  It used the term "branded communities" to refer to an online community sponsored by a brand.  For example, it included the following text:

[A company can build or create] a “branded” community by either using open source technology like Drupal [8] OR it can employ the services of a white label community provider like Awareness [9], Jive Software [10] or Mzinga [11](the company I work for).

Frankel's July 24 email complained about this paragraph and asked Leggio to "refrain from using the phrase in any other current or future materials." Frankel's company i-legions sells advertising/branding services to online businesses and uses the slogan "Revenue Generating Branded Communities®" in its promotional materials.

In response to Frankel's email, Leggio changed the phrase "branded community" to "branded environment" in the post. She also sought the advice of another ZDNet blogger Denise Howell [12], who is an intellectual property attorney.  Howell put Leggio in contact with Marty Schwimmer of The Trademark Blog [13], who indicated to her that i-legion's trademark infringement claim was not strong because its registration was likely limited to use in connection with advertising services, and  Strout's use was "descriptive fair use of words in the English language." Leggio also conferred with ZDNet corporate parent CNET [14]'s legal team, which confirmed Schwimmer's assessment. 

Leggio posted [6] all this information, including Frankel's email, on her blog, but she did not change the current version [4] of the Strout's post, which still reads "branded environment" rather than "branded community."