[superultra]

To add to that - if a company is not actively protecting the trademark, even in well intentioned cases, then someone can use the trademark and point to a precedent of the brand not defending its trademark, especially if it’s probable that the company was aware of the usage.

Waffle House (or any other brand) must and 100% always will send out a C&D for trademark misusage, otherwise they lose legal protection for that trademark.

[rostigerpudel]

> Waffle House (or any other brand) must and 100% always will send out a C&D for trademark misusage, otherwise they lose legal protection for that trademark.

Actually, I'm pretty sure their request has no trademark law legs to stand on. Trademark infringement first and foremost requires two things: a) commercial use and b) for the goods and services the trademark is registered for.

Now I just checked and Waffle House has registered its trademark for "waffles", for "mugs", for "keychains" and other trinkets and for "restaurant services", but has zero registrations for "providing information online" or similar. So they really had nothing to defend with regard to a website that sells nothing.

Basically, had he just changed the website to use the name in text, they would have had a hard time to even forbid the nominative use of the trademark to refer to the actual waffle house (referring to the actual owner of a trademark in a nominative/descriptive manner is generally allowed).

There may be other areas of law that are more pertinent, but this is no case of good faith trademark defense. There was no "must" here. Looks like BSing someone who does not know better so he backs off. Also looks like using the archaic und expensive US legal system as a tool for coercion. Even if you're right, you need to be able to afford being right...

[superultra]

I think you're missing some nuance in your understanding of trademarks with all due respect.

The core use of trademark protection isn't a commercial use, necessarily. Rather, it's the act of infringing on the trademark holder's commercial use. So, if Waffle House is selling Waffle House t-shirts, and a business next door is giving away free Waffle House t-shirts that they printed - then yes, Waffle House would very likely win a lawsuit against someone giving away waffle house t-shirts.

Basically if someone is giving away or, especially, selling something that causes a confusion against the original trademark, then yes, the trademark "must" be protected.

By "must" I don't mean it's legally required. I just mean you're going to have a harder time in court if you need to pursue legal action against a company or person if there's a precedent you have not actively protected the trademark in other instances.

edit: and in this case, the site was causing confusion, so they sent a C&D. Also as the other commentor mentioned, the logo is trademarked.

[rostigerpudel]

To make it clear: The trademark is the combination of the sign (e.g. the word or logo) and the goods and services it is registered for. If you use the same sign for different goods and services then there is no infringement and no watering down/dilution, thus nothing to defend against.

There is a difference when treating well-known trademarks (say Coca-Cola, Sony, Google), however I doubt Waffle House gets over the threshold set for that for being too local (I counted at least 20 states that do not have one) and not sufficiently known by all demographics (if you want to know more read up on the Lanham Act).

Full disclosure: I am a TM lawyer, but not in the US. YMMV and what I write here is no legal advice ;-) since only gathered from US colleagues' explanations regarding cases clients had in the US.

The notorious/well-know concept is part of an international treaty (Art. 6bis of the Paris Convention) and its interpretation is similar in most western countries, so I'd expect the US interpretation to not be that far off.

[superultra]

Thanks for explaining and lending your expertise.

Though, I am, again not a lawyer, but I am 99% sure you can't go use the Waffle House logo to sell anything, let alone waffles. I only say that because no one is using, say, the Coca-Cola brand to sell shoes, and if they did, we all know Coca-Cola would prevent that. That goes for any trademark in the US. So perhaps trademark law is different here?

Also, Waffle House are ubiquitous as a brand in the United States - certainly not as well known as Coca-Cola or Sony, but I have no doubt they'd be able to prove national awareness in any demographic.

In this particular case if you look at the C&D, it is for the trademark usage. It's likely that this person could have simply removed the trademark from the page and it would have been fine.

edit: I think the key in other industries would be proof of brand dilution - that is, if you start using the Nike logo to sell waffles, Nike would send a C&D if not a team of lawyers because you are diluting the trademark. So I guess you're technically right, although functionally, brand dilution is easily provable.

[rostigerpudel]

No prob. Just some random bits I found looking around for clues whether there already were any decisions from US courts wrt whether Waffle House is a well-known trademark:

Interestingly enough, Waffle House is mentioned in a 2007 article related to a US trademark law reform as an edge case [1].

This does not seem to be the first time that Waffle House appears to be overreaching: [2]. The balls to pull this off with a straight face, kudos to the colleagues.

An article from INTA relating to dilution [3].

[1] https://scholarship.shu.edu/cgi/viewcontent.cgi?article=1864... page 458, last paragraph and footnote [2] https://www.techdirt.com/2011/08/17/waffle-house-says-rap-so... [3] https://www.inta.org/fact-sheets/trademark-dilution-intended...

[AStonesThrow]

https://commons.wikimedia.org/wiki/File:Waffle_House_Logo.sv...

This logo image consists only of simple geometric shapes or text. It does not meet the threshold of originality needed for copyright protection, and is therefore in the public domain. Although it is free of copyright restrictions, this image may still be subject to other restrictions. See WP:PD § Fonts and typefaces or Template talk:PD-textlogo for more information.

[b112]

You don't trademark for your advertising, commercials, menus, signs, or your website. You trademark for contents.

[cycomanic]

What do you believe is actually covered by trademark law? Maybe, the name of the website, but clearly the location and open status can't be, that would mean Google and many other map providers are violating trademarks on a massive scale. Or another example those websites with maps of petrol stations and their prices?

[rostigerpudel]

Sorry, I do not understand what you mean to say. Could you elaborate?

[skeaker]

This is often brought up and almost never true. No reasonable court would dump their trademark over this. It needs to be overwhelmingly out of their hands and in the public conscious. "Frisbee" for example still holds their trademark over the word Frisbee despite the fact that the vast majority of people don't even realize that it's a trademarked term. Businesses have de facto no obligation to defend their trademark to the extent that the internet often thinks they do.

[superultra]

I am not a trademark lawyer. I'm guessing you aren't either or you would have said so. But multiple lawyers on multiple projects with multiple brands have mentioned this to me, and we have sent C&Ds to protect trademarks. With at least two of those lawyers, sure, it might just be more billable hours. But two were pretty decent guys and wouldn't have done it if they didn't think it was necessary.

At least within my corner of the business world (and not just "the internet"), it seems this is common knowledge among lawyers.

My guess is that, sure, would a court throw out a trademark? Maybe not, but the law works on a fine line between actuals (precendent) and hypotheticals, and it's just cheaper to issue a C&D than it is to fight a prologned legal battle about predcedent.

Also, it's interesting you mention Frisbee. There's a term for that: "genericide," and it's the term used to describe that exact scenario. Frisbee is one brand that didn't actively protect against trademark erosion and now we call every flying disc a Frisbee. Retrospectively, Frisbee might have wished they'd sent more C&Ds. Nintendo is one brand that has actively protected brand erosion, which is why we don't call it a Sony Nintendo.

[skeaker]

Exactly my point: Frisbee is subject to genericide but keeps its trademark status because courts almost never actually take trademarks from businesses. If they don't do it to Frisbee then they won't do it to Waffle House because the courts, as you say, rely on precedent.

[mschuster91]

> Waffle House (or any other brand) must and 100% always will send out a C&D for trademark misusage, otherwise they lose legal protection for that trademark.

Time to change that braindead law then. Copyright has a "fair use" provision, and trademark law could be adapted similarly.

[hinkley]

You can use a trademark any time you want. How would brand recognition work if people couldn't talk about Mustangs and Corvettes?

What you can't do is claim it's yours. Or let people think it's yours.

[dragonwriter]

> You can use a trademark any time you want.

No, you can't. If you could use it whenever yoh want, we wouldnt have the concept of “nominative fair use” as the exceptional case of when and how you are allowed to use someone else’s mark in commerce without permission.

[hinkley]

Mmm. “Anything” is maybe hyperbole.

You can’t represent yourself or product as a brand. But you can write a scathing review about them and use their name and nobody can stop you. That wouldn’t be a trademark situation, it would be defamation, not infringement.

[kopecs]

https://en.wikipedia.org/wiki/Fair_use_(U.S._trademark_law)

https://en.wikipedia.org/wiki/Nominative_use

[gorkish]

To me this whole situation seems to be a pretty good example of what not to do if faced with a copyright claim. It's tempting to see outfits like The Onion or Cards Against Humanity doing this kind of thing and feel like you are bulletproof and can do it too. But it's pretty easy to tell when these 'open letter' responses have not received legal review.

Waffle House had a legitimate claim and acted on their obligation to their trademark.

There is a pretty good argument that Waffle House continues to have a claim.

They probably wont do anything because its, frankly, a waste of time.

This could probably have been avoided entirely if copyrights were correctly respected from the beginning.

[cycomanic]

What exactly is the trademark violation that they are "obliged" to defend? Somebody putting location and opening times of their restaurants on a map?

[gorkish]

In this case it was their logo mark. AFAIK that's the only claim that they actually made as well. Reading anything else into this story is ridiculous.