Wordle and Cloudy Trademark Claims

Early this morning, TechCrunch reported that Wordle, a popular text cloud generator, was down because the site’s admin was facing a trademark dispute from the owner of the registered Wordle trademark.  The Internet went nuts.  We here at 95years care about things that make the Internet go nuts, so I’ve decided to skip my usual Sunday morning ritual of watching Face the Nation and Meet the Press followed by a marathon of horrible VH1 reality TV to provide a little bit of clarity on the issues at hand. This should in no way be construed as legal advice, and is simply my ruminations on what is a somewhat murky area of trademark law.

Wordle is a registered trademark, belonging to Mark Jordan Koeff, a photographer from California.  Mr. Koeff  registered the mark under classes protecting, amongst other things, paper goods, board games, and textiles.  This may prove pivotal in sorting out the dispute.  When a trademark is registered, the registrant must provide classes of goods for which they are registering the mark.  That’s why Apple, for instance, can trademark the word for protection over computers, but has no claim over fruit, or perhaps more notably, record labels bearing the same name.  Thus, identical trademarks can in fact coexist on dissimilar products.  Jonathan Feinberg, the owner of wordle.net, probably has no intention of creating a Wordle board game or Wordle textiles.  I dare not speak for the man, but gut instinct tells me I’m probably not wrong on this one.  As such, he may in fact be in the clear.  As we’ve mentioned before,  a trademark claim generally rests on a likelihood of confusion for consumers.  The burden is on Mr. Koeff to show that consumers will be confused as to the origin of the Wordle site in relation to Koeff’s goods or services, none of which I can track down after a rather cursory search.  Koeff could also bring a claim for trademark dilution, stating that the wordle site lessen’s the uniqueness of Koeff’s mark.  This will get shot down with a quickness, though, as dilution claims are generally reserved for famous marks.  No offense to Koeff, but I’ll eat my hat if Wordle is a famous mark.

At its face, Koeff’s not wrong to dispute the name of the site.  An owner of a trademark is required to actively police his mark in order to avoid dilution.  Monster Cable is infamous for adamant policing of their mark.  Feinberg didn’t necessarily have to take the extreme measure of taking down his site, but it can be extra scary when someone with a piece of paper from the government threatens legal action.  There’s a chance Feinberg will have to rebrand his site, but that really does rest upon the class registration and whether the marks are used in concurrent channels. Hopefully this will come to a speedy resolution for all parties involved.

This entry was posted by Joe on Sunday, February 28th, 2010 at 11:54 am and is filed under Uncategorized. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response below, or trackback from your own site.

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