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By: R. Eddie Wayland, TCA General Counsel
This month, a jury awarded a Wisconsin-based trucking company $3.25 million in damages for trademark infringement, unfair business competition, and other charges against a company that owns the controlling interest in several job-board posting websites related to the trucking industry. Beginning in April of 2010, the trucking company entered into a relationship with the job-board company in which the trucking company paid a monthly fee for the job-board company to use the trucking company’s registered name and trademarks on the FindATruckingJob.com website for the purpose of advertising and posting job openings. In exchange, the job-board company would forward all job applications in response to those postings to the trucking company. The trucking company also posted job openings on JustTruckingJobs.com, a similar website which, at that time, was owned and operated by a different post-board company.
Background of the case
In 2012, after the trucking company had terminated its relationship with the other company regarding JustTruckingJobs.com, the job-board company subsequently acquired the website two months later. Shortly thereafter, the job-board company discovered that there were still advertisements and postings for the trucking company’s jobs on the website. However, instead of removing the advertisements and postings, the job-board company opted to simply redirect any applications so the trucking company would not receive them. The job-board company claimed it was afraid that removing the posts would hurt its search engine rankings and could potentially damage the website itself.
In September of 2013, because the trucking company had federal trademark protection, it sent a cease and desist letter to the job-board company, demanding removal of all advertisements and other references to the trucking company on all of the job-board company’s websites. A year later, however, the trucking company discovered that the job-board company had failed to remove some of the advertisements on various websites, including JustTruckingJobs.com. Accordingly, the trucking company filed suit for trademark infringement in violation of the Lanham Act, unfair business practice, and violation of a Wisconsin statute that makes it a crime for a person to intentionally use any identifying information of an entity without consent or authorization in order to gain a benefit or value.
After surviving a motion for summary judgment and arguing the claim at trial, the jury ultimately awarded the trucking company $3.25 million for the job-board company’s infringing uses of the trucking company’s registered name and trademarks. The jury agreed that once the trucking company had formally ended the relationship, the job-board company had no legal right to continue using the trucking company’s registered name or trademarks on its websites without a formal license or the trucking company’s express consent. Thus, because the trucking company had invested in the protection of registering its trademarks, it was able to adequately protect the integrity of its name and assert legal control over the use of its recognized logos.
The issue of trademark protection may not get the attention it deserves in the trucking industry. As this case demonstrates, however, there can be considerable value in a trucking company’s name and logo. Trucking companies should take adequate measures to protect all their intellectual property, including trademarks. These measures include both properly registering their trademarks and then protecting their trademarks where necessary. This may involve taking legal action as occurred in this case. Companies should consult with counsel if questions arise or if they decide to seek formal trademark protection.
R. Eddie Wayland is a partner with the law firm of King & Ballow. You may reach Mr. Wayland at (615) 726-5430 or at firstname.lastname@example.org. The foregoing materials, discussion and comments have been abridged from laws, court decisions, and administrative rulings and should not be construed as legal advice on specific situations or subjects.
May 24, 2016