[rostigerpudel]

> Waffle House (or any other brand) must and 100% always will send out a C&D for trademark misusage, otherwise they lose legal protection for that trademark.

Actually, I'm pretty sure their request has no trademark law legs to stand on. Trademark infringement first and foremost requires two things: a) commercial use and b) for the goods and services the trademark is registered for.

Now I just checked and Waffle House has registered its trademark for "waffles", for "mugs", for "keychains" and other trinkets and for "restaurant services", but has zero registrations for "providing information online" or similar. So they really had nothing to defend with regard to a website that sells nothing.

Basically, had he just changed the website to use the name in text, they would have had a hard time to even forbid the nominative use of the trademark to refer to the actual waffle house (referring to the actual owner of a trademark in a nominative/descriptive manner is generally allowed).

There may be other areas of law that are more pertinent, but this is no case of good faith trademark defense. There was no "must" here. Looks like BSing someone who does not know better so he backs off. Also looks like using the archaic und expensive US legal system as a tool for coercion. Even if you're right, you need to be able to afford being right...

[superultra]

I think you're missing some nuance in your understanding of trademarks with all due respect.

The core use of trademark protection isn't a commercial use, necessarily. Rather, it's the act of infringing on the trademark holder's commercial use. So, if Waffle House is selling Waffle House t-shirts, and a business next door is giving away free Waffle House t-shirts that they printed - then yes, Waffle House would very likely win a lawsuit against someone giving away waffle house t-shirts.

Basically if someone is giving away or, especially, selling something that causes a confusion against the original trademark, then yes, the trademark "must" be protected.

By "must" I don't mean it's legally required. I just mean you're going to have a harder time in court if you need to pursue legal action against a company or person if there's a precedent you have not actively protected the trademark in other instances.

edit: and in this case, the site was causing confusion, so they sent a C&D. Also as the other commentor mentioned, the logo is trademarked.

[rostigerpudel]

To make it clear: The trademark is the combination of the sign (e.g. the word or logo) and the goods and services it is registered for. If you use the same sign for different goods and services then there is no infringement and no watering down/dilution, thus nothing to defend against.

There is a difference when treating well-known trademarks (say Coca-Cola, Sony, Google), however I doubt Waffle House gets over the threshold set for that for being too local (I counted at least 20 states that do not have one) and not sufficiently known by all demographics (if you want to know more read up on the Lanham Act).

Full disclosure: I am a TM lawyer, but not in the US. YMMV and what I write here is no legal advice ;-) since only gathered from US colleagues' explanations regarding cases clients had in the US.

The notorious/well-know concept is part of an international treaty (Art. 6bis of the Paris Convention) and its interpretation is similar in most western countries, so I'd expect the US interpretation to not be that far off.

[b112]

You don't trademark for your advertising, commercials, menus, signs, or your website. You trademark for contents.

[cycomanic]

What do you believe is actually covered by trademark law? Maybe, the name of the website, but clearly the location and open status can't be, that would mean Google and many other map providers are violating trademarks on a massive scale. Or another example those websites with maps of petrol stations and their prices?

[rostigerpudel]

Sorry, I do not understand what you mean to say. Could you elaborate?