Comments on: Sensis lawyers bully small fry over Yellow Pages trademark http://stilgherrian.com/marketing/sensis_legal_bullies/ All publication is a political act. All communication is propaganda. All art is pornography. All business is personal. All hail Eris. Sat, 19 Jul 2008 07:16:40 +0000 http://wordpress.org/?v=2.5.1 By: Stilgherrian · Sensis’ legal bullying revisited http://stilgherrian.com/marketing/sensis_legal_bullies/#comment-10582 Stilgherrian · Sensis’ legal bullying revisited Thu, 07 Feb 2008 13:56:02 +0000 http://stilgherrian.com/marketing/sensis_legal_bullies/#comment-10582 [...] 19 January I wrote about Sensis’ lawyers sending legal “nastygrams” to small website owners. Professor Roger Clarke has received a response [PDF file], which we [...] [...] 19 January I wrote about Sensis’ lawyers sending legal “nastygrams” to small website owners. Professor Roger Clarke has received a response [PDF file], which we [...]

]]> By: Stilgherrian http://stilgherrian.com/marketing/sensis_legal_bullies/#comment-9690 Stilgherrian Sun, 20 Jan 2008 09:08:18 +0000 http://stilgherrian.com/marketing/sensis_legal_bullies/#comment-9690 <strong>@Shawn Callahan:</strong> Thanks for that background information. According to <a href="http://en.wikipedia.org/wiki/Yellow_pages"><em>Wikipedia</em></a> (and a hat-tip to <a href="http://mailman.anu.edu.au/pipermail/link/2008-January/077103.html">David Lochrin</a>): <blockquote>The name and concept of "Yellow Pages" came about in 1883, when a printer in Cheyenne, Wyoming working on a regular telephone directory ran out of white paper and used yellow paper instead. Reuben H Donnelly later expanded on this concept in 1886 to recreate the very first official yellow pages directory. Today, the expression "Yellow Pages" is used globally, in both English and non-English speaking countries; in the US it refers to the category, while in some other countries it is a registered name and therefore a proper noun.</blockquote> I had a look at <a href="http://www.ipaustralia.gov.au">IP Australia</a> yesterday and, yes, the trademarks "yellow pages" and "electronic yellow pages" and "talking yellow pages" are registered to Telstra. Nowhere can I see "the Yellow Pages directory" as a registered trademark -- though I'm a novice at trademark searches. Many trademark-holders do <em>not</em> want their marks to become generic, since that would allow "lesser-quality products and services" to trade on the "good name" of the "better brand". Presumably that's what was happening in your case. As I understand trademark law, if you don't actively defend against infringements then that can be used as a defence. However I am not a lawyer. @Shawn Callahan: Thanks for that background information. According to Wikipedia (and a hat-tip to David Lochrin):

The name and concept of “Yellow Pages” came about in 1883, when a printer in Cheyenne, Wyoming working on a regular telephone directory ran out of white paper and used yellow paper instead. Reuben H Donnelly later expanded on this concept in 1886 to recreate the very first official yellow pages directory.

Today, the expression “Yellow Pages” is used globally, in both English and non-English speaking countries; in the US it refers to the category, while in some other countries it is a registered name and therefore a proper noun.

I had a look at IP Australia yesterday and, yes, the trademarks “yellow pages” and “electronic yellow pages” and “talking yellow pages” are registered to Telstra. Nowhere can I see “the Yellow Pages directory” as a registered trademark — though I’m a novice at trademark searches.

Many trademark-holders do not want their marks to become generic, since that would allow “lesser-quality products and services” to trade on the “good name” of the “better brand”. Presumably that’s what was happening in your case.

As I understand trademark law, if you don’t actively defend against infringements then that can be used as a defence. However I am not a lawyer.

]]> By: Shawn Callahan http://stilgherrian.com/marketing/sensis_legal_bullies/#comment-9688 Shawn Callahan Sun, 20 Jan 2008 05:26:51 +0000 http://stilgherrian.com/marketing/sensis_legal_bullies/#comment-9688 In our case Telstra was unhappy for me to use the generic term 'yellow pages' as synonym for a directory of people. In the knowledge management field it's common practice to refer to your yellow pages directory as a list of your employees and their details (phone numbers, location, who reports to who). In fact IBM call its internal directory Blue Pages. I would have thought Telstra would support this type of generic use just like saying "Google it" when you mean search it, Hoover it when you mean vacuum it, or grab the Esky even when it's not an Esky. In our case Telstra was unhappy for me to use the generic term ‘yellow pages’ as synonym for a directory of people. In the knowledge management field it’s common practice to refer to your yellow pages directory as a list of your employees and their details (phone numbers, location, who reports to who). In fact IBM call its internal directory Blue Pages. I would have thought Telstra would support this type of generic use just like saying “Google it” when you mean search it, Hoover it when you mean vacuum it, or grab the Esky even when it’s not an Esky.

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