Wal-Mart filed counterclaims in a lawsuit against Charles Smith, asserting trademark and unfair competition claims under federal and state law. The case arose after Smith created a website using the domain name www.walocaust.com and started selling nazi-themed "Walocaust" merchandise through his account on Cafepress.com. Smith, a passionate critic of Wal-Mart, created a number of "Walocaust" graphics that parodied Wal-Mart's familiar trademarks and slogans by likening Wal-Mart's business practices to nazism and its effect on communities to the Holocaust. Smith reproduced these graphics on his website and printed them on T-shirts and other novelty merchandise that he sold through Cafepress. Wal-Mart sent cease-and-desist letters to Smith and CafePress in December 2005 and February 2006. Smith responded by filing a lawsuit in federal court in Georgia seeking a declaration that his use of the "Walocaust" was lawful, and Wal-Mart counterclaimed.

Wal-Mart asked the court for an injunction barring Smith from making any commercial use of the prefix "Wal," for an order awarding it ownership of Smith's Wal-Mart-related domain names, and nominal damages. After the lawsuit commenced, Smith registered the domain names www.wal-qaeda.com and www.walqaeda.com and developed a new series of graphics for CafePress merchandise combining "Wal-Mart" with "Al-Qaeda" and expressing Smith's virulently anti-Wal-Mart views.

In March 2008, the federal district court granted summary judgment to Smith on all counts and dismissed Wal-Mart's counterclaims. The court held that Smith's use of Wal-Mart trademarks was a parody, and that no reasonable person would be confused by Smith's parodic use. The court further ruled that Wal-Mart's trademark dilution claim was barred because Smith's use of the company's trademarks was protected "noncommercial" speech, despite the fact that he placed his graphics on items like T-shirts sold to the public.

The Utah Lighthouse Ministry (UTLM), an organization that publishes information critically analyzing the history and doctrines of the Church of Jesus Christ of Latter-day Saints (LDS), sued Allen Wyatt, his company Discovery Computing, Inc. (DCI), the Foundation for Apologetic Information & Research (FAIR), and one of FAIR's directors, Scott Gordon. UTLM publishes its views and sells books written by its founders, Jerald and Sandra Tanner, on its official website, www.utlm.org. Wyatt, a professional website designer and the Vice President of FAIR, a non-profit organization that responds to criticisms of LDS, created a website which attempted to parody the UTLM official site and linked visitors to pro-LDS sites. Wyatt bought several domain names and redirected them all to his parody website. The domain names included www.utahlighthouse.com, www.sandratanner.com, www.jeraldtanner.com, www.uthahlighthouse.org, plus six other similar names.

In April 2005, UTLM sued Wyatt,DCI, FAIR, and Gordon in Utah federal court for trademark infringement and dilutition, trade dress infringement, cybersquatting, and violation of federal and state unfair competition laws. Among other things, the complaint alleged that the defendants' use of UTLM's trademarks in the domain names associated with the Wyatt website infringed its trademark rights because that site and the official UTLM site were confusingly similar.

In March 2007, the district court granted the defendants' motions for summary judgment and dismissed the lawsuit. The court held that the trademark, trade dress, dilution, and unfair competition claims failed because Wyatt's website did not constitute a "commercial use" of UTLM's marks, but rather a "noninfringing parody of Plaintiff's site." The court further held that there was no evidence that the defendants registered the domain names with a "bad faith intent to profit" from the UTLM marks, as required for a cybersquatting claim.

Update:

5/29/2008 - On appeal, the Tenth Circuit affirmed the district court's judgment.

Lifestyle Lift, Inc. owns the trademark "Lifestyle Lift" for use in connection with cosmetic and plastic surgery procedures. The company licenses this trademark to cosmetic and plastic surgery centers across the country, and doctors perform facelift procedures marketed to the public under the name "the Lifestyle Lift." In January 2008, Lifestyle Lift sued Real Self, Inc., the operator of RealSelf.com, an interactive website with forums that let consumers discuss their experiences with cosmetic and plastic surgery procedures and vote on whether a procedure was "worth it" or "not worth it." A number of RealSelf users have written negative reviews of the Lifestyle Lift procedure, with 55% of users currently saying that the procedure was "not worth it."

The complaint alleges federal trademark infringement, unfair competition under federal and state law, and a violation of the Michigan Consumer Protection Act. It claims that RealSelf.com passed itself off as affiliated with Lifestyle Lift by using its trademark in metadata and publishing a page that incorrectly listed contact information for doctors performing its procedure in Michigan. It is not altogether clear the extent to which Lifestyle Lift is alleging that RealSelf user reviews incorporating its mark violated its trademark rights. (Notably, one of the exhibits to the complaint consists almost entirely of user reviews about Lifestyle Lift.)

On March 3, 2008, Real Self filed an answer alleging that its use of the mark is a fair and nominative use (the latter defense refers to situations where you need to use someone's trademark in order to discuss or comment on a product or service). The company also filed counterclaims, alleging that Lifestyle Lift violated its terms of service (and unfair competition laws) by planting shill reviews in the Lifestyle Lift discussion threads.

Update:

5/12/08 - The parties settled. The terms of the settlement are not public. 

7/15/2009 - According to the New York Times, Lifestyle Lift agreed to pay $300,000 in penalties and costs to New York State to settle an action brought be the New York Attorney General over Lifestyle Lift's practice of posting fake reviews on consumer review websites posing as satisfied clients.

Eric Menhart is a lawyer who practices Internet law or "cyberlaw" in Washington, D.C. He is the principal attorney at a law firm called "CyberLaw P.C" and operates the blog Cyberlawg. Michael Grossman, a Chicago-based attorney, operated a blog entitled "CyberBlawg." Menhart sent Grossman a letter asserting Grossman was violating his trademark rights. In his own blog entry about the topic, Menhart says that the letter was "informal" and was about a "potential dilution" of his blog's name. Grossman has since changed the name of his blog.

This is part of Menhart's ongoing quest to trademark the term "cyberlaw." In December 2007, Menhart applied for trademark rights on the term, sparking outcries from many cyberlawyers who claimed that Menhart's application would not succeed because the term "cyberlaw" is generic. In February 2008, Menhart amended his trademark application, and he now is only trying to register his firm's stylized logo which incorporates the word "cyberlaw." In Eric Goldman's view, this move signifies that cyberlawyers, including Grossman, "are now free to use the term 'Cyberlaw' for its dictionary meaning without fear of getting sued by Menhart."