Legal Gray - Trademark infringement and copyright

Subject: Legal Gray - Trademark infringement and copyright
From: Nano Management Services <nano -at- GLEN-NET -dot- CA>
Date: Mon, 20 Oct 1997 19:58:56 -0400

Hi Everyone - Can someone lend some expertise here? A company (XYZ) wishes
to publish a commercial (for profit) newsletter (NL) whose major theme
centers on another company's (Widget) product.

In order for the NL to attract the right audience, it is necessary to
mention Widget's product by name in the NL's title. ie - "The Humble
Report" with Humble being the registered trademark of Widget. This same
trademark name can be found in Webster's, used as a noun.

The Widget company has been contacted and shown a pre edition copy of the
NL. In their view, there may be a trademark infringement issue here. The NL
quite clearly identifies in the masthead that the word "Humble" is a Widget
trademark. Elsewhere, information is given about the actual owner and
publisher (XYZ).

Although XYZ wishes to co-operate with Widget and get it "on its side", it
doesn't want to have to kiss their ass or be threathened with trademark
infringement. I think Widget's concern is that the reader of this NL may
believe they are reading a publication owned, or in some way endorsed, by
the Widget company. XYZ plans to tell it the way it sees it and may at times
be quite critical of this product. This is reflected even in the pre
edition. XYZ is not interested in trying to license trademark rights from

Widget may also be thinking about starting their own NL. In any event ...
Widget's product is written about in various other publications without a
whit of trademark acknowledgement.

What is the proper approach to use here so that the NL can be published
without Widget having any grounds for trademark infringement claims? Is the
fact XYZ wishes to use a word in its NL title that is also a trademark of
Widget a red herring? Will using it as a noun instead of an adjective
"shift" its status from a trademark to a generic word? Is there a simple
solution to this? Any copyright problems with this situation?
Thanks for taking the time to read this message
To contact Allen Merkley, send E -mail to:
nano -at- glen-net -dot- ca

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