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Old 01-27-2007, 09:35 PM   #1 (permalink)
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Your Analysis Needed: Trademark Infringement? Proactiv Solution vs Propassiv Solution

New York State

Just briefly on my case:
I used the acne skin care system, Proactiv Solution (http:.//www.proactiv.com), a product of Guthy-Renker, in June 2005 and over the next several months, I suffered severe outbreaks of skin lesions that I had never experienced before. When inquiring about these severe outbreaks, Guthy-Renker’s unlicensed medical support representatives advised me to continue using Proactiv and even sold me additional products that only worsened the situation. Ultimately, I ended up getting professional help from a dermatologist who cleared my acne, although I have been left with permanent facial scars and discoloration on my face.

During this time, I suffered anguish and depression, which still hits me today. I feel very strongly about what happened to me. Therefore, I have created a website called, http://www.propassiv.com, to share my experience with others so that what happened to me does not happen to anyone else.

Recently, I have gotten an email from my domain handler stating that Guthy-Renker's trademark lawyers said that I am violating trademark laws and that if I do not contact them, my domain would be cancelled. I don't agree for the following reasons: a) I'm not advertising or profitting from my site, b) I'm simply sharing my experience with Proactiv with others and using a derivative of Proactiv's images to reference them, c) any rational person coming to my site would not confuse it as being run or sponsored by Proactiv.

Questions:
I understand that Proactiv is a billion dollar company with good lawyers, but I do not wish to shut down or modify my website until I am certain that I have violated trademark laws, as I feel the public should know the possible depressing damages Proactiv can cause. Apparently Proactiv's trademark lawyers disagree with me, so I would like for you, the experts, to visit both http://www.proactiv.com and http://www.propassiv.com and give me your professional opinions and analysis on what you think of this case - violation of trademark laws or not?

And while we're at it, with the information provided, do you feel that my situation warrants a case?

All opinions welcome.

Thank you,

Chris
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Old 01-28-2007, 08:37 AM   #2 (permalink)
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Quote:
Originally Posted by ixk1ngxi View Post
New York State

Just briefly on my case:
I used the acne skin care system, Proactiv Solution (http:.//www.proactiv.com), a product of Guthy-Renker, in June 2005 and over the next several months, I suffered severe outbreaks of skin lesions that I had never experienced before. When inquiring about these severe outbreaks, Guthy-Renker’s unlicensed medical support representatives advised me to continue using Proactiv and even sold me additional products that only worsened the situation. Ultimately, I ended up getting professional help from a dermatologist who cleared my acne, although I have been left with permanent facial scars and discoloration on my face.

During this time, I suffered anguish and depression, which still hits me today. I feel very strongly about what happened to me. Therefore, I have created a website called, http://www.propassiv.com, to share my experience with others so that what happened to me does not happen to anyone else.

Recently, I have gotten an email from my domain handler stating that Guthy-Renker's trademark lawyers said that I am violating trademark laws and that if I do not contact them, my domain would be cancelled. I don't agree for the following reasons: a) I'm not advertising or profitting from my site, b) I'm simply sharing my experience with Proactiv with others and using a derivative of Proactiv's images to reference them, c) any rational person coming to my site would not confuse it as being run or sponsored by Proactiv.

Questions:
I understand that Proactiv is a billion dollar company with good lawyers, but I do not wish to shut down or modify my website until I am certain that I have violated trademark laws, as I feel the public should know the possible depressing damages Proactiv can cause. Apparently Proactiv's trademark lawyers disagree with me, so I would like for you, the experts, to visit both http://www.proactiv.com and http://www.propassiv.com and give me your professional opinions and analysis on what you think of this case - violation of trademark laws or not?

And while we're at it, with the information provided, do you feel that my situation warrants a case?

All opinions welcome.

Thank you,

Chris
The mere fact that you've used a trademark name without express permission is violation of copyrighted trademark law. The fact that you've also used the name in a clearly negative 'advertising' manner may be grounds for a lawsuit on their behalf, should they choose to pursue it. While you do have the right to create a site expressing your opinion, you should at the very least contact the particular company in question and obtain their express written permission.

Respond to them now and ask under what terms you can freely post on your website.

Good luck.
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Old 01-28-2007, 01:40 PM   #3 (permalink)
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This is by far the most interesting response I've ever gotten. So you're saying that everytime a consumer has a complaint about a company's products or services, they should first obtain permission from the company? Did you read this out loud to yourself? Do you really think the company will say, "Ok, you can use our trademark to tell the public about your negative experience with our products and services."

Trademark laws have been implemented as to avoid confusion of who the true source is. Any rational person visiting my site will not confuse my site as being run by Proactiv. Further, I am not selling or profitting from my site. You're thinking of copyright in its literal meaning. There is much more to it than what you're thinking :-)

Quote:
Originally Posted by TheJury'sStillOut View Post
The mere fact that you've used a trademark name without express permission is violation of copyrighted trademark law. The fact that you've also used the name in a clearly negative 'advertising' manner may be grounds for a lawsuit on their behalf, should they choose to pursue it. While you do have the right to create a site expressing your opinion, you should at the very least contact the particular company in question and obtain their express written permission.

Respond to them now and ask under what terms you can freely post on your website.

Good luck.
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Old 01-28-2007, 01:47 PM   #4 (permalink)
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Quote:
Originally Posted by ixk1ngxi View Post
New York State

Just briefly on my case:
I used the acne skin care system, Proactiv Solution (http:.//www.proactiv.com), a product of Guthy-Renker, in June 2005 and over the next several months, I suffered severe outbreaks of skin lesions that I had never experienced before. When inquiring about these severe outbreaks, Guthy-Renker’s unlicensed medical support representatives advised me to continue using Proactiv and even sold me additional products that only worsened the situation. Ultimately, I ended up getting professional help from a dermatologist who cleared my acne, although I have been left with permanent facial scars and discoloration on my face.

During this time, I suffered anguish and depression, which still hits me today. I feel very strongly about what happened to me. Therefore, I have created a website called, http://www.propassiv.com, to share my experience with others so that what happened to me does not happen to anyone else.

Recently, I have gotten an email from my domain handler stating that Guthy-Renker's trademark lawyers said that I am violating trademark laws and that if I do not contact them, my domain would be cancelled. I don't agree for the following reasons: a) I'm not advertising or profitting from my site, b) I'm simply sharing my experience with Proactiv with others and using a derivative of Proactiv's images to reference them, c) any rational person coming to my site would not confuse it as being run or sponsored by Proactiv.

Questions:
I understand that Proactiv is a billion dollar company with good lawyers, but I do not wish to shut down or modify my website until I am certain that I have violated trademark laws, as I feel the public should know the possible depressing damages Proactiv can cause. Apparently Proactiv's trademark lawyers disagree with me, so I would like for you, the experts, to visit both http://www.proactiv.com and http://www.propassiv.com and give me your professional opinions and analysis on what you think of this case - violation of trademark laws or not?

And while we're at it, with the information provided, do you feel that my situation warrants a case?

All opinions welcome.

Thank you,

Chris
First of all, you are in error calling anyone here "experts". While different people here are experts in different areas of law, no one here is hired BY you, so, please do not consider advice given on ANY web site on the Internet "expert" advice.

If you are convinced this product damaged you, you would do better to hire an attorney, and sue them for damages. Your having a web site in an attempt at somehow damaging them, in reality, has the potential to only damage you further. You believe this product damaged you and you say so publicly. However, you have no substantive proof, unless the one doctor you went to could unequivocally say this exact product was the lone cause of the damage you sustained. In other words, aside from using their trademarked name, you have no scientific substantial proof this product was the only cause of the damage you allegedly suffered. They could counter that you used something else WITH the product, or some other allegation. In other words, there is no proof you even put this product ON your skin in the first place. Obviously, you know that you did, but you cannot tread on legal grounds with this type of flimsy "proof".
I could have a skin problem of some kind, order a product off TV, go to a doctor and show him the product and say, "See?? This stuff messed up my face!!" But aside from clinical trials showing this product to be unsafe, you really have no concrete proof.
Another example: I go to a drive through, order food, take it home and eat it. In the next day or two, I become sick and decide to make a web page stating that McDonalds tried to poison me, yada yada. The reality is there is no proof that that particular food made me sick. Perhaps it was something I ate BEFORE I went. See the possibilities? Also of concern is the fact that you say you knew the product was damaging your skin, but you willingly purchased MORE and applied it to already broken and damaged skin. This alone, I believe, makes you culpable. You call them "unlicensed medical support" on the telephone--but even if they held every license in the world, did you REALLY expect them to be able to diagnose and treat your skin condition over the phone?
Also, regarding your "before" and "after" pictures.. they could argue you simply reversed them--the ones you call "after" are really "before" photos. What are the odds you just HAPPEN to have a whole set of pictures, close up, showing your face before and after? To a casual observer, it could seem as though you orchestrated this entire scenario. I've ordered things from TV before, such as facial lotion. It never occurred to me to take pictures of my face before buying and applying the lotion, unless, of course, I was going to orchestrate a scam of some kind.

I believe you are treading on ground that has the potential to give way underneath your feet. If you are convinced you can prove this product damaged you, lose the web site---the handful of people that actually come across it and decide not to purchase the product is probably very few in comparison to the literally millions THEY spend on advertising. While it might make you feel better to have this web site, the resulting action could be detrimental to you.

Hire an attorney---he or she can tell you if your position is legitimate. Until then, disable the site--not for them, but for you.
Good luck.
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Last edited by GentleGrace; 01-28-2007 at 01:54 PM.
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Old 01-28-2007, 02:06 PM   #5 (permalink)
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Quote:
Originally Posted by ixk1ngxi View Post
This is by far the most interesting response I've ever gotten. So you're saying that everytime a consumer has a complaint about a company's products or services, they should first obtain permission from the company? Did you read this out loud to yourself? Do you really think the company will say, "Ok, you can use our trademark to tell the public about your negative experience with our products and services."

Trademark laws have been implemented as to avoid confusion of who the true source is. Any rational person visiting my site will not confuse my site as being run by Proactiv. Further, I am not selling or profitting from my site. You're thinking of copyright in its literal meaning. There is much more to it than what you're thinking :-)
Having a complaint is very different from making a web page using their copyright material and images. It doesn't matter that "no one would think I was Proactive's web site". It also doesn't matter that you aren't selling anything. You ARE using their images---doesn't matter if you aren't posing as them. Those images belong to THEM.

I agree with you though. Asking the company for permission to use their name, or images in a web site complaining about their product is one of the more patently ridiculous suggestions I've read on this site. It's almost like asking the police to help you file a complaint against the police department. Ummmm, 'kay.

But, I digress....What is it you are trying to gain by all of this? I don't think you have any idea of the magnitude of what you are doing. I also challenge you to show your site to ANY attorney in "real life" and have he or she say what you are doing is legal. It is not. What you are doing has nothing to do with the First Amendment and everything to do with a sizable lawsuit being levied against you. For what? Saying "I want everyone to know my story" doesn't require the use of copyrighted material. Tell your story. But do it lawfully. Call an attorney today.
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Old 01-28-2007, 02:59 PM   #6 (permalink)
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I'm going to disagree with both TheJury'sStillOut and GentleGrace.

You are correct, ixk1ngxi, that generally speaking, trademark laws were designed for the purpose of preventing confusion. Therefore, in a suit for trademark infringement, the owner of the trademark must show that there is a likelihood of confusion between the trademark and the allegedly infringing mark.

There is a mountain of case law on this subject, but the bottom line is that parody that does not confuse potential consumers is allowed (read this webpage for more info: http://www.abanet.org/litigation/com...6_outline.pdf).

I am refraining from passing judgment on your website specifically, however, since I am not the judge or jury who would ultimately decide whether your website would confuse people. If you are worried about a lawsuit, see a trademark attorney for his opinion. On a side note, I'm amused by the fact that Proactiv's lawyers have taken notice...apparently you've struck a chord with the company.

As for a potential claim against Proactiv, it's not quite as bleak as GentleGrace has implied.

While you will be required to prove your case, defenses such as "those pictures could have been taken anytime" or "you can't prove that you ever actually used the product" are extremely weak. In civil suits especially, you are not required to prove your case beyond all doubt. Generally, you must only prove your case by a preponderance of the evidence. In other words, if a jury could reasonably believe that you were wrongfully injured by Proactiv, you can win.

Coincidentally, I just researched a food poisoning case three days ago which counters GentleGrace's McDonalds example. Granted, it was in Florida, not New York, but I suspect the law is similar in both jurisdictions.

From Gant v. Lucy Ho's Bamboo Garden, Inc., 460 So.2d 499 (Fla. App. 1 Dist., 1984):
Florida courts have recognized that...it is not always necessary to prove legal causation by expert testimony if other competent evidence demonstrates causation....

It has been held in a food poisoning case that although the only means of definitely ascertaining the precise cause of illness is to chemically analyze the food and plaintiff's stools, the failure to present such evidence does not leave the plaintiff's case legally insufficient in the presence of circumstancial evidence....

Counsel for defendant seems to be of the belief that it was necessary for plaintiffs to prove beyond all doubt that the shrimp salad was the underlying cause of their illness and that it was encumbent upon them to have had a chemical analysis taken either of the food or of their stools in order that it might be positively established that the shrimp were unfit for human consumption. Counsel is mistaken. The law does not require exact proof, but only that the claim be shown with reasonable certainty.

[W]e hold that the evidence in this case was sufficient to make a jury issue on whether the appellee's egg rolls consumed by Monica were the cause of her illness. There was no showing that lack of proper personal hygiene practices by Monica likely caused her ingestion of the bacteria. The expert testimony, together with the circumstances...supports reasonable inferences that the egg rolls--the single common factor to which both Monica and her sister were exposed--were the most probable carrier of the shigella bacteria which caused Monica's illness.
So, at least in Florida, reasonable inferences are enough for a jury to hold a defendant liable for food poisoning (and probably other medical conditions as well). I'm not saying you'd win if you sued, but if I were you, I'd see a lawyer about your experience with Proactiv.

Last edited by jdmba; 01-29-2007 at 01:16 PM.
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Old 01-28-2007, 04:30 PM   #7 (permalink)
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I couldn't disagree more. A claim of irreparable harm is certainly bold and is one I would absolutely LOVE to see him prove in court. How would you prove that the PRODUCT caused the scarring and not the acne he already had? Also, you could never prove those photos were not retouched. If you don't believe me, check out MY web pages---I don't look NEARLY that nice in real life ( I'm taller--what did you THINK I meant?? )

Regardless, I hardly think that a web site such as this causes concern for a company the size of Proactiv. I suspect they are well aware that there are myriads of dissatisfied customers and a web site such as this is hardly a threat. However, any time there is a perceived infringement, it is their attorneys job to address it. I am not certain I'd flatter myself into thinking that their merely noticing the web site and contacting me is proof they are particularly concerned about their projected sales for the coming year.

If you really believe you have been harmed and you really think you can prove it, sue. You obviously don't believe in your position, or you WOULD sue to rectify this egregious (presumed) wrong. Making a web page about your personal experience doesn't prove to another person that the product will do the same for them. That is why companies MAKE different products---because people are different.

If you sued, what would you sue for? Would you claim a defect in the product because it didn't work for you? I suspect their literature never claims to be effective for EVERYONE. Would you claim there was a manufacturing defect? Would you claim they had a duty of care to warn you against using their products? I suspect there are warnings to discontinue use immediately and contact a physician if an adverse reaction is noted. Also, you could never prove that someone told you on the telephone to buy MORE products and apply them to already injured skin.

If you, as a young man, have the time and money to devote to this type of thing, I say continue as you have. While I cannot imagine devoting my life and my money to acne medication, to each his own.

At the least, jdmba can represent you in court, unless, of course, you had someone make the web page for you, and they didn't complete it in time, but you only had a verbal contract---wait, wrong posting. At any rate, don't call Jdmba just yet. I'm calling him (her) tomorrow when I go through the drive-thru at McDonalds and order coffee and act like I couldn't have possibly predicted it would be served * hot* and I sustain third degree burns to my nether regions.


*cheeky grin*
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Old 01-28-2007, 05:11 PM   #8 (permalink)
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Grace,

Your mistake, in my opinion, is that you demand proof. I'm not sure what you mean by that, but I assume you mean that a plaintiff needs to present evidence that proves his position beyond any doubt. That is just not true (as I tried to illustrate with the food poisoning case I cited).

Reasonable inferences are generally good enough. Additionally, the totality of the evidence would certainly be considered. For example, it's not much of a stretch to reasonably conclude that a person who purchased a product will have used the product. Therefore, for example, if the plaintiff can show receipts that he purchased the product, and he then testified that he used the product, a jury could reasonably conclude that he used the product.

The proof you seem to demand just isn't necessary.

Just to clarify, however, I am not stating that I think the OP would win a suit. I couldn't possibly guess that without seeing all of the evidence, and even then, who knows what a jury would believe?

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Old 01-29-2007, 05:01 AM   #9 (permalink)
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Grace,

Your mistake, in my opinion, is that you demand proof. I'm not sure what you mean by that, but I assume you mean that a plaintiff needs to present evidence that proves his position beyond any doubt. That is just not true (as I tried to illustrate with the food poisoning case I cited).

Reasonable inferences are generally good enough. Additionally, the totality of the evidence would certainly be considered. For example, it's not much of a stretch to reasonably conclude that a person who purchased a product will have used the product. Therefore, for example, if the plaintiff can show receipts that he purchased the product, and he then testified that he used the product, a jury could reasonably conclude that he used the product.

The proof you seem to demand just isn't necessary.

Just to clarify, however, I am not stating that I think the OP would win a suit. I couldn't possibly guess that without seeing all of the evidence, and even then, who knows what a jury would believe?
I agree with you wholeheartedly. I know next to nothing about civil law at this point in my experience and education. I tend to evaluate these questions through the eyes of the criminal standard of proof since that is where my admittedly limited education lies.

To the OP, anything I say here is based little else than my opinion since criminal law is my area of expertise ( I use the term liberally) . Clearly, I defer to Jdmba--obviously he (she) knows more about it than do I. That being said, I do believe my position has some merit legally and what you hope to gain ( I still cannot speculate ) has the potential to damage you more than you could possibly damage them.

This scenario reminded me recently of a friend who went through a nasty break up from a 12 year relationship(not marriage, no common law in my state). We tape recorded the woman he left saying she was going to damage his property ( high dollar tools, 440 high performance motor that was going in a hot rod he was rebuilding, etc). When we went to pick up his things pursuant to the claim and delivery papers, we found his things damaged just as she said. Specific things we tape recorded her saying like, "How much damage would an ice pick do to tires?" --sure enough, the tires had holes in it from an ice pick. However, we were not only unable to prosecute her criminally ( tape recordings not withstanding ) we were unable to recover from her civilly either. The position of the court in both situations was that just because she said on tape she was going to do these things doesn't mean she did. Someone could have overheard her and done the damage (pffttttt....) Never mind that she admitted on tape she cut the lock to the shed where these items were housed. Even if someone mysteriously entered the shed and did the exact damage she threatened to do, the reality is it was not her shed and she had no key ( no legal access to the shed ) and admitted she cut the lock off therefore , I believe, making her culpable for any damage done by anyone.

Per the criminal standard (beyond a reasonable doubt) I felt she clearly was guilty. Also, I felt the civil standard ( preponderance of the evidence, totality of circumstances ) was clearly met as well. From what you are saying, "reasonable inferences" are satisfactory. I am here to tell you that is not always the case. If having tape recordings of phone calls stating she was going to specifically damage his things before the claim and delivery was completed isn't enough to prosecute her or recover civilly, I don't know what is.

So, I guess I'm saying what you are stating is generally the case. But in my "real life" ( Not expert ) experience, it doesn't always happen that way.

Going to Mcdonalds for coffee now. *wiggling eyebrows*
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Old 01-29-2007, 07:10 AM   #10 (permalink)
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Do not mistake what I wrote to mean that the fact finder is going to infer what you want him to infer. That may have been the problem with your friend's case.
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