Do sites like Yellowpages have an obligation to help enforce my trademark?

[Molly12]

Do websites like Yellowpages.com, Manta.com, Citysearch.com etc. that contain business listings have an obligation to help enforce trademark law? If I were to contact one of these sites and say that a number of it's users have violated my trademark, would they be required to remove those businesses from their listings?

 

[Zigner]

Do websites like Yellowpages.com, Manta.com, Citysearch.com etc. that contain business listings have an obligation to help enforce trademark law? If I were to contact one of these sites and say that a number of it's users have violated my trademark, would they be required to remove those businesses from their listings?

Sorry, this forum is for US law only.

 

[WisTex]

Do websites like Yellowpages.com, Manta.com, Citysearch.com etc. that contain business listings have an obligation to help enforce trademark law? If I were to contact one of these sites and say that a number of it's users have violated my trademark, would they be required to remove those businesses from their listings?

I would suggest contacting those websites and seeing what their policies are. If they are using your trademark or copyrighted materials, you could file a DMCA takedown request if the site is located in the U.S.

 

[Zigner]

I would suggest contacting those websites and seeing what their policies are. If they are using your trademark or copyrighted materials, you could file a DMCA takedown request if the site is located in the U.S.

That wasn't the question. OP wants to force them to stop allowing advertising for companies that s/he feels are violating his rights. Here in the US, that's not going to work, even with a DMCA takedown request, as the companies aren't violating his rights on those sites.

 

[quincy]

I would suggest contacting those websites and seeing what their policies are. If they are using your trademark or copyrighted materials, you could file a DMCA takedown request if the site is located in the U.S.

Plus what you wrote isn't quite right, WisTex.

Trademark enforcement is up to the trademark holder in the U.S. and does not involve the DMCA takedown, which is part of the Copyright Act.

But the answer to Zigner's question is important before much more can be said.

 

[Molly12]

That wasn't the question. OP wants to force them to stop allowing advertising for companies that s/he feels are violating his rights. Here in the US, that's not going to work, even with a DMCA takedown request, as the companies aren't violating his rights on those sites.

Could you expand more on why that is not violating trademark rights on those sites? Are you saying that I could go onto Yellowpages and put up 'Starbucks' with my own address and information and it would not be trademark infringement?

 

[Zigner]

Could you expand more on why that is not violating trademark rights on those sites? Are you saying that I could go onto Yellowpages and put up 'Starbucks' with my own address and information and it would not be trademark infringement?

Your original post did not posit that situation.

And, what US state are you in?

 

[quincy]

What is the name of your state, Molly?

 

[Molly12]

Could you expand more on why that is not violating trademark rights on those sites? Are you saying that I could go onto Yellowpages and put up 'Starbucks' with my own address and information and it would not be trademark infringement?

Let me first explain my situation in more detail: I work for an organization and obviously I'm attempting to enforce our trademark. The problem that I seem to be running in to is that there are businesses that are no longer operational and their information was never taken down off of these business-listing type sites. If a business is no longer operational, I have no way of contacting them with a Cease and Desist. It seems silly to even send a Cease and Desist if the business is no longer running, but there name is still out there cause trademark infringement, confusion, dilution, etc.

 

[FlyingRon]

DMCA means SQUAT to trademarks.

 

[Molly12]

Let me first explain my situation in more detail: I work for an organization and obviously I'm attempting to enforce our trademark. The problem that I seem to be running in to is that there are businesses that are no longer operational and their information was never taken down off of these business-listing type sites. If a business is no longer operational, I have no way of contacting them with a Cease and Desist. It seems silly to even send a Cease and Desist if the business is no longer running, but there name is still out there cause trademark infringement, confusion, dilution, etc.

I am in California, however we maintain a nation-wide trademark.

 

[FlyingRon]

You've still lost me. What exactly is in the directory listing that is a violation of your trademark. The fact that a business legitimately used your mark and is no longer in business is NOT a violation or dilution.

 

[quincy]

I am in California, however we maintain a nation-wide trademark.

You are responsible for enforcing your own trademarks. If a business connected to you is no longer in operation, and it was using your trademark legitimately at one time, and it is still being listed in the directories, this is not trademark infringement (or dilution or whatever else you ran across on a web search).

The directories will drop the listings when they are no longer being paid to list them.

I think you are confused about trademark rights and may want someone else in your organization handling the enforcement of the group's rights.

 

[Molly12]

You've still lost me. What exactly is in the directory listing that is a violation of your trademark. The fact that a business legitimately used your mark and is no longer in business is NOT a violation or dilution. Trademarks doesn't mean you control all mention of your mark in the world.

When we send out Cease and Desist it includes to discontinue use of all advertisements that infringe on our trademark, business listing sites like Yellowpages included. I am not accusing Yellowpages itself of infringement, I am however asking that, as a third party involved, do they have any responsibility to assist in a situation like this?

 

[quincy]

When we send out Cease and Desist it includes to discontinue use of all advertisements that infringe on our trademark, business listing sites like Yellowpages included. I am not accusing Yellowpages itself of infringement, I am however asking that, as a third party involved, do they have any responsibility to assist in a situation like this?

You as trademark holder are responsible for enforcing your own rights. No one else is going to do it for you.

Sending out cease and desist letters to infringers is one way to do it. A trademark infringement suit is another.

This requires that you identify your infringer and notify them of the infringement - but first you need to know exactly what infringement of a trademark is and is not, and I don't see that you are clear on this. It does not appear from what you have posted so far that any infringement on your rights has occurred.

I suggest you sit down with an IP attorney in your area for a review.