[LINK] 'Yellow Pages' as a Trademark

[Jeremy Malcolm]

On 18/01/2008, at 8:44 AM, Roger Clarke wrote:

> Note that the use of the term on the page is quite general, and  
> there is no evidence of any attempt to appropriate the term, nor to  
> benefit commercially or otherwise from its use, nor to denigrate the  
> IP owner.  In fact it promotes your site, and speaks in a  
> complimentary manner about it.  Under the circumstances, the letter  
> is not only inappropriate, but oppressive.


Roger,

My wife received a similar nastygram from Piper Alderman on behalf of  
Telstra a year or so back, regarding her "Comedian Yellow Pages" at http://www.comedydownunder.com/aussie/yp/ 
.

The letter we sent in response:

(begins)

> I refer to your letter of 20 November 2006 (received today)  
> addressed to Dominica Corless (now Malcolm) in relation to the  
> alleged unauthorised use of your clients' registered trade mark  
> "Yellow Pages".  I am instructed to reply to that letter on her  
> behalf.
>
> The allegations contained in your letter are denied, for reasons  
> which, without limitation, include the following:
>
> 1. Mrs Malcolm is not aware of any registered trade mark of your
>    client's that is infringed by her use of the ordinary
>    English words "Yellow Pages" in the context in which they
>    are used on her Web site.
>
>    For example, the specific mark referred to in your letter, no
>    545667, covers as you have noted telephone books, telephone
>    directories and business directories.
>
>    The impugned pages of the Comedy Down Under Web site are not
>    a telephone directory or business directory in any sense.
>    The pages are more in the nature of an encyclopaedia which
>    contain biographical information on comedians and comedy
>    groups.  Listings are unpaid and do not, except incidentally
>    in some cases, contain contact information for the comedians
>    listed.
>
>    Should there be some other specific class of goods or services
>    in respect of which your client has a registered trade mark
>    that you allege has been infringed by Mrs Malcolm, then I
>    would be obliged if you would point that specific mark out as
>    I am at a loss to find it.
>
> 2. The suggestion in paragraph 8 of your letter that Mrs Malcolm's
>    usage of the words "Yellow Pages" on the Comedy Down Under Web
>    site are likely to mislead members of the public into believing
>    that there is an association between her organisation [sic] and
>    your clients, is with respect, far-fetched.  If you have any
>    data to demonstrate that any such confusion exists or has
>    existed, then I would be obliged if you would provide it.
>
>    Even so, and certainly without any admission, Mrs Malcolm is
>    willing to preface the relevant pages of her Web site with a
>    statement to the effect that there is no affiliation between
>    herself and either of your clients.
>
> In light of the foregoing, my client does not intend to cease using  
> the words "Yellow Pages" on her Web site in the context in which  
> they are presently employed, and have been continuously so employed  
> for approximately seven years.
>
> Should any further communication be necessary, please direct it to  
> this address by email, and not to the dominica_c at yahoo.com email  
> address or the Safety Bay postal address, neither of which are  
> regularly monitored by Mrs Malcolm.
>
> Please note however that Mrs Malcolm reserves the right to post  
> copies of communications between us on this issue to her Web site  
> and/or to other public fora for the interest of activists in the  
> areas of online freedom of expression, intellectual property reform,  
> restrictive trade practices, and corporate oppression of youth and  
> alternative culture.

(ends)

-- 
Jeremy Malcolm LLB (Hons) B Com
Internet and Open Source lawyer, IT consultant, actor
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