On July 26, 2008, Rob Frankel of i-legions sent an email to tech blogger Jennifer Leggio of ZDNet Feeds complaining about a post by guest author Aaron Strout that used the term "branded communities." Frankel indicated that i-legions owns a federally registered trademark 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 functioned as a "primer" on what steps online businesses should take in evaluating their "community engagement strategies." It used the term "branded communities" in the ordinary, if slightly business-speak-y, sense 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 OR it can employ the services of a white label community provider like Awareness, Jive Software or Mzinga (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 Denise Howell, another ZDNet blogger who is an intellectual property attorney. Howell put Leggio in contact with Marty Schwimmer of The Trademark Blog, 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's legal team, which confirmed Schwimmer's assessment:
Jennifer’s legal source is correct and Mr. Frankel is wrong. The blog did not make a trademark use of the phrase so no permission was needed to use the mark and there was no infringement of the mark by doing so.
Leggio published all this information in a very thoughtful post on her blog, but she did not change the current version of the Strout's post, which still reads "branded environment" rather than "branded community."
While I'm not so sure that a court would adopt the rather controversial "trademark use" doctrine referred to by CNET's legal team, I agree with Schwimmer that this looks like a case of descriptive fair use, affirmed by the Supreme Court most recently in KP Permanent Make-Up, Inc. v Lasting Impression I, Inc., 543 U.S. 111 (2004). Moreover, there is little likelihood that readers of Leggio's blog were confused into thinking that i-legions was the source or sponsor of Leggio or Strout's blogging services. (Strout works for Mzinga, an apparent competitor of i-legions, which could make this analysis trickier than it initially seems.) Regardless of the specific argument, I am confident that a court would confirm that trademark law emphatically does not permit trademark owners to remove their chosen words from the English language.
For updates, please check out database entry, i-legions v. Leggio.