UPDATED Well, if you ask *me* – The ITQ Advice Column (Trademark Woes Edition)

Oh, for heaven’s sake:

Liberals ‘Green shift’ brand hits a snag
BILL CURRY
From Tuesday’s Globe and Mail
June 23, 2008 at 7:53 PM EDT

OTTAWA — Stéphane Dion’s cross-country tour promoting his “green shift” hit a potentially embarrassing pothole Monday as a Toronto environmentalist took legal action over what she describes as “blatantly unethical” trademark infringement.

A firm already operating as Green Shift sent a cease and desist letter Monday afternoon to the Liberal Party and the company is considering whether to sue for damages.

[...]

There were no apologies from Liberals Monday, who noted the party had secured the rights to the domain name www.thegreenshift.ca: a slick-looking website that allows visitors to calculate how Mr. Dion’s plan to reduce greenhouse gases will affect their family finances. Ms. Wright’s website is www.greenshift.ca.

“What they’re doing is so blatantly unethical,” Ms. Wright said.

More from Canadian Press:

Environmental consultant Jennifer Wright, who has owned Green Shift since 1999 and registered the company name in 2001, said Monday she and a handful of other dedicated environmentalists who work with the firm can’t afford to have its identity associated with any political party.

But efforts that began last week, when Dion unveiled the Liberal party’s so-called Green Shift, have yielded no results. Wright said legal action may be the only recourse.

“We’re just trying to ask them politely to do the right thing,” she said in an interview. “We have asked them to stop using the name and we’ve asked them for a full public apology.”

A Liberal spokesman confirmed the party knew of the Green Shift company before Dion’s announcement, saying someone contacted Green Shift before Dion announced the scheme last week.

“A courtesy call was made last Monday in advance of (the) launch to let them know they might get increased traffic,” said Mark Dunn, Dion’s communications director.

Wright, however, said the call came on Wednesday and it was unclear exactly what the Liberal representative who called intended by the conversation.

[...]

A Liberal spokesman discounted the company’s protests that the Liberals mimicked Green Shift’s web domain name, by adding the article “the” before Greenshift.ca.

“We rightly own the domain name,” said Dunn. “We are not a commercial threat to the company. The content of our site is about policy, not products.”

Here’s the thing: I suspect that the Liberal Party is legally in the clear on this one.

Five minutes with Google confirms that the term ‘green shift’ did not, in fact, originate with the company in question. In fact, it has appeared in many other contexts before now, apparently without objection: as the name of an environmental pilot program out of Perth, Ontario(supported by the federal government, no less); there is also a Manchester-based public private “Green Shift” taskforce dedicated to making the production, use and disposal of computers more environmentally friendly, and at least two books that use the phrase in their respective titles – one on developing a “green sensibility” in architecture, and the other on environmental public policy.

Also, as Mark Dunn points out, the Liberals site “is about policy, not products” – it’s hard to see how you could really mistake a political party platform for a company that sells biodegradable coffee cups, and even if you did, it’s not like you wouldn’t quickly realize your mistake if you actually wanted to buy said coffee cups, what with the distinct lack of a coffee cup order form on the Liberal website.

All in all, I’d say there is very little chance that potential or existing Green Shift clients will be confused, or mistake the for-profit Green Shift site for a subsidiary of a federal political party, particularly now that the Liberals have put a disclaimer on the front page of the party’s site.

All that being said, however — c’mon, guys. Y’all have to realize that the optics here are just awful.

Unless there’s a whole backstory here that has yet to come out — which is possible, I guess; I’m a little puzzled by the inconsistency over which day Wright was called, as well as what was actually said by both parties — anyway, unless somehow, we’re missing a crucial bit of information, it really seems as though you should have taken Wright’s concerns – which are, if perhaps overly cautious, entirely legitimate – seriously, and worked out some sort of solution before launching the site. Given the incorrigibly inquisitive nature of the blogosphere – especially amongst partisans and politics nerds -  it wasn’t a question of whether this apparent case of name collision would come up, but when. (To be honest, I’m surprised it took this long.)  You may be on solid ground as far as trademark law — although I’d love to hear thoughts on that from any amateur or professional law-talking guys out there — but would it have been so difficult to work with this company, rather than spring this just a few days before the launch?

On the plus side, though, I suspect that it is still possible to broker a peaceful end to this standoff without either side being forced to call in the lawyers. For the Liberals, that means apologizing, and then working from there; for Wright – well, I’d say accepting that apology would be the classy thing to do. Then, y’all can figure out some way to make everyone happy without spending thousands of dollars on legal fees, or being forced to reprint thousands of posters, hats and t-shirts. Really, how would either of those outcomes do anything to protect the environment? Isn’t that, ultimately, what both sides want to do?

UPDATE - This National Post story on the dispute includes the following comment, from an actual trademark lawyer, which seems to back up the theory that this may not be a case of actionable infringement:

George A. Wowk, an intellectual and copyright lawyer at Calgary firm Burnet, Duckworth & Palmer LLP said that the fact that Ms. Wright has applied for a trademark, though it is pending approval, still affords her some protection.

But in order to succeed in making a case for infringement, Ms. Wright will have to demonstrate that the Liberals’ use of the term “Green Shift” leads people to mistake or misunderstand the relationship between the organization, Green Shift Inc., and the Liberals’ Green Shift platform.

“In the marketplace now, we have Apple computers, Apple Auto Glass, Apple Records and all those sorts of things, and generally they can coexist in the marketplace without confusion,” Mr. Wowk said. “The basis of trademark law is confusion, so [the central issue will be] whether or not there’s confusion in the marketplace.”

The court may also consider the fact that Mr. Dion’s Green Shift program is a political, rather than commercial, interest, he added.