Last Friday Twin Cities Business and the Minneapolis Star Tribune reported on 3M’s recent trademark infringement case filed against online retailer Shoplet.

In case you haven’t seen it yet, here is a pdf of the complaint.

It asserts a variety of violations of 3M’s exclusive rights in the federally-registered POST-IT trademark, including federal trademark infringement, false designation of origin, federal dilution of a famous mark, dilution under Minnesota law, deceptive trade practices under Minnesota law, unfair trade practices under Minnesota law, various common law claims, and unjust enrichment.

According to the complaint:

"Shoplet operates a website, www.Shoplet.com, offering for sale office supplies made by a variety of manufacturers. This website has a search function allowing consumers to search for products."

"Searches of the Shoplet.com website for the mark "Post-it" consistently return repositionable notes manufactured by Universal, a 3M competitor, as the first results, labeled "featured" products . . . ."

"These competing products are displayed under the POST-IT Mark, which appears near the top of the page in large red type. 3M’s POST-IT products often are not included anywhere on the first page of results under the POST-IT Mark although the default search results are represented as sorted according to relevance."

"On information and belief, Shoplet asks manufacturers to pay for ‘featured’ and/or otherwise prominent placement of its products in results for searches for the manufacturers’ trademarks, but does not inform consumers that results of searches of its site include paid advertisements."

One might wonder, a week later now, if Shoplet would have stopped having Universal brand notes appear more prominently than the obviously more relevant 3M POST-IT notes upon a search for "Post-it" — but, not so.

It makes me wonder whether Shoplet is positioning itself to stick it out and defend Google-style, or whether it will decide to reposition its website search results upon further reflection.

What do you think about 3M’s lawsuit?

  • Tom Casagrande

    If 3M were my client, I would have encouraged the suit, which I think has merit. The main problem is using “Post-it” in red letters as the header for the list of products that follows. Shoplet will no doubt argue it’s a generic product category (a weak argument), but if it isn’t generic, then that use will be held to be likely to cause confusion. If Shoplet listed the products under “self stick notes” or some other product category then it would be more like a Google Adwords issue. But I would still argue that a valid claim would exist even then because of the facts that 3M’s branded product wasn’t listed first and that the competing brands weren’t clearly differentiated in some fashion. That hypothetical would be as if Google mixed the sponsored ads in with the search results and displayed the paying Adwords customers’ listings first.