Cease and Desist Letter Rcd on a Trademark - But we use it differently.....

[CoCoYaYa]

What is the name of your state (only U.S. law)? WI

We are some baseball players who started making a few T-shirts with a commonly used baseball term on it. Within a matter of a week/or two we received a cease and desist email by a company who holds the trademark for this term. We looked up their company and the term they have trademarked is used to describe something different than what we describe (yet I can see it being similar in ways) but they are in a completely different industry/crowd. One where I cannot possibly see customers crossing paths in confusion with the 2 companies.

The trademark they hold on the term is for pretty much for all forms of apparel.

We are not that big of a company, and they found us using this term SUPER QUICK after we offered the shirt! That being said, we didnt make or sell many items with the term on it at all. So we have little ground, if any, to lose by stopping the sale of these items (which we did stop). However, I really think using the term on shirts/apparel in our baseball industry would be a big hit this season and had many ideas on how to promote/market it for us to make profit and would like to continue using it.

My question is, should I contact the Trademark holder and offer a royalty to "lease" the term for a period of time? Is that something that is even considered? Or can I Trademark the term as well as we are in (2) different industrys?

Thoughts? I would be willing to share the term to anyone who can assist me. I just didnt want to publicly use it in my initial post.

Thanks!

 

[FlyingRon]

We don't do confidential communications here. If you need confidentiality you'll need to contact (and pay for) an attorney.

Cease and desist letters are easy to write. The question is whether you are infringing or not, that you've given us SQUAT to go on.
Yes, you could negotiate permission to use their trademark (either for a fee or not), it's up to them if they want to do that.

 

[quincy]

What is the name of your state (only U.S. law)? WI

We are some baseball players who started making a few T-shirts with a commonly used baseball term on it. Within a matter of a week/or two we received a cease and desist email by a company who holds the trademark for this term. We looked up their company and the term they have trademarked is used to describe something different than what we describe (yet I can see it being similar in ways) but they are in a completely different industry/crowd. One where I cannot possibly see customers crossing paths in confusion with the 2 companies.

If the company that holds the registered trademark is a famous company, they can prevent ALL uses of their mark. For example, you cannot use the word "Coke" on a tee-shirt even though Coca-Cola is a soft drink. And even marks similar to a registered trademark can be subject to infringement claims. Again using the Coke example: a maker of "Cocaine" tee-shirts was successfully sued over their use of the word cocaine, because it mimicked in style the Coca-Cola script (which is also trademark-protected).

No consumer confusion would be generated by the use of cocaine over Coke, but there is more to consider with trademarks than consumer confusion (like disparagement, dilution, unfair competition). And there is more than names that can have protection (such as colors and slogans and nicknames and lettering).

The trademark they hold on the term is for pretty much for all forms of apparel.

If the company holds the trademark "pretty much for all forms of apparel," then your use of the trademark on a tee-shirt appears to be infringing on their rights.

We are not that big of a company, and they found us using this term SUPER QUICK after we offered the shirt! That being said, we didnt make or sell many items with the term on it at all. So we have little ground, if any, to lose by stopping the sale of these items (which we did stop). However, I really think using the term on shirts/apparel in our baseball industry would be a big hit this season and had many ideas on how to promote/market it for us to make profit and would like to continue using it.

Trademark holders, especially those who hold famous trademarks, are vigilant. They scour the marketplace for infringers and do not hesitate to send out cease and desist letters and/or take legal action against those who infringe their marks. This is largely because if a trademark holder is not vigilant and they allow for wide use of their mark by others, they can lose all rights to their mark entirely.

Google has been fighting to ensure that their name does not become a generic term, since many now use their trademark to describe any internet search (e.g., I am going to "google" it). Once a mark becomes used in a generic sense by the populace, the mark can no longer be protected under trademark law, which is what happened to the once-protected trademarks "escalator" and "cola."

This is why trademark holders police the market for infringers. They generally have a lot invested in their trademark and they do not want to risk losing their rights to the mark. Many more cease and desist letters, therefore, will be distributed than may be necessary (that is, not all who receive a C&D are actually infringing). These letters are the easiest and cheapest way for a trademark holder to stop any unauthorized uses of their mark.

My question is, should I contact the Trademark holder and offer a royalty to "lease" the term for a period of time? Is that something that is even considered? Or can I Trademark the term as well as we are in (2) different industrys?

Thoughts? I would be willing to share the term to anyone who can assist me. I just didnt want to publicly use it in my initial post.

Responding to the cease and desist letter by contacting the company is certainly one option you can consider. If it is a well-known company, there is probably little chance that they will grant you a license to use their mark on your baseball tee-shirts - but it doesn't hurt to ask.

Another option to consider is to attempt to register the name yourself - but because this can be a costly option, knowing as you do in advance that another trademark holder already opposes your use and your registration has a good chance of being rejected, I do not recommend this option until you are able to review the facts of your use and the other company's use with an IP attorney in your area.

And a personal review is the option I suggest - because it is entirely possible that your use would not be seen as infringing on the rights of the registered mark holder and you could then respond to the C&D in a different way than if your use is clearly an infringement. But, FlyingRon is correct that we cannot offer personal services on this forum. For that you need to see an attorney in your area.

The one option I would not consider right now, until you know if your use is infringing or not, is continuing to make and sell tee-shirts with the mark that is in question.

You were smart in your post, by the way, not to publicly use the real trademarks involved. These names would (more than likely) have been edited out of your post by the moderator of this site.

Good luck.

 

[OHRoadwarrior]

On the other hand. Use of the term might mistakenly make people believe your team is supported by that company and they feel that is a bad reflection on them.

 

[justalayman]

If the company holds the trademark "pretty much for all forms of apparel," then your use of the trademark on a tee-shirt appears to be infringing on their rights.
.

that's what didn't make any sense to me. OP said the owner of the mark uses it for apparel and OP wants to use it for apparel yet they are in a "completely different industry".

 

[quincy]

On the other hand. Use of the term might mistakenly make people believe your team is supported by that company and they feel that is a bad reflection on them.

Right. A questioned endorsement or sponsorship by, or affiliation with, the trademark holder when the team uses the same (or similar) name would be infringement if consumer confusion results from the dual use. Trademark law centers on consumer confusion. The whole purpose of a trademark is to identify a product or service and distinguish it from all others. Trademarks not only protect the trademark holder, who has a reputation to uphold, but also protects consumers from confusing the origin of the products or services they purchase.

A "bad reflection" on the trademark holder was one of the elements addressed in the Coca-Cola/Cocaine suit. The connection of cocaine with Coke not only could work to disparage the Coke name and harm its reputation, but the use could potentially dilute the value of the mark and its distinctive script.

The trademark being used can be key to knowing how valid the cease and desist letter is and how far the trademark holder could be willing to take a challenge of the use of the name by the baseball team. If it is a registered mark being used without authorization, however, it is not surprising that the use by the baseball team resulted in a cease and desist letter - especially if, as suggested by CoCoYaYa, there was a profit expected from the sale of the tee-shirts.

I think it smart that the tee-shirts were removed from the market for now. A review should be done before any thought of selling additional shirts.


I just read your post, justalayman. Yes, I too sort of wondered why CoCoYaYa would think that tee-shirts wouldn't be covered by "apparel."

 

[single317dad]

that's what didn't make any sense to me. OP said the owner of the mark uses it for apparel and OP wants to use it for apparel yet they are in a "completely different industry".

I can imagine a scenario: Baseball team wants to produce shirts with the word "Strike!", and an image of the action. UAW (for example) owns all rights to the use of the word "strike" on apparel. Two unrelated industries, one word.

Gotta love the English language.

 

[CoCoYaYa]

I can imagine a scenario: Baseball team wants to produce shirts with the word "Strike!", and an image of the action. UAW (for example) owns all rights to the use of the word "strike" on apparel. Two unrelated industries, one word.

Gotta love the English language.

Yes, that what the scenario I was getting at single317dad

Thanks for the advice from everyone. My next step is to meet with a local Intellectual Property Attorney to discuss much of what was recommended.

Great forum here, thank you everyone.

 

[quincy]

I can imagine a scenario: Baseball team wants to produce shirts with the word "Strike!", and an image of the action. UAW (for example) owns all rights to the use of the word "strike" on apparel. Two unrelated industries, one word.

Gotta love the English language.

I do not see where the UAW has registered "Strike!" as a trademark, although my search was admittedly a limited one. Did my search miss the UAW's mark or was your use of the UAW for illustrative purposes only?

I DO see where "Strike!" was once the registered trademark for a computer software company and a beer company (these marks have since been cancelled), and I see that the word "Strike" was recently registered by a Wisconsin-based SOCCER association as an identifier for an apparel line. This could be a problem for the baseball team, if "strike" is actually the word being used on the baseball tee-shirts.

Generic words like "strike" on their own cannot (generally) be protected under trademark law unless the words are used in an "arbitrary" way. They can gain trademark protection if used in a way unrelated to the goods or services being offered. For example, "Arrow" for shirts is an arbitrary mark and "Penguin" for books is another and "Strike" to identify beer or software or apparel would be others. The word arrow to identify arrows, on the other hand, is using the word generically and could not be registered.

If the trademark in question here is a famous mark all unauthorized uses of it on any (even unrelated) goods and services can be prevented - and if the trademark is, indeed, the word "strike," the use of it by the Wisconsin baseball team on baseball tee-shirts could be seen as infringing on the Wisconsin Association's rights - although I see potential arguments available to the baseball team that could support their use.

Whatever the case, I think you are smart to have your tee-shirts and the cease and desist letter personally reviewed by an IP attorney in your area, CoCoYaYa. The real trademark needs to be known to determine if your use can legitimately be seen as infringing on the trademark holder's rights or to see if you have a defense to any infringement, or if, instead, you are simply the victim of an overzealous trademark holder. That sometimes happens.

Good luck.

 

[justalayman]

I can imagine a scenario: Baseball team wants to produce shirts with the word "Strike!", and an image of the action. UAW (for example) owns all rights to the use of the word "strike" on apparel. Two unrelated industries, one word.

Gotta love the English language.

but we are speaking of two producers of apparel. If one has a trademark for the use of the mark on apparel, then they have the mark on the use of applying it to apparel.

 

[single317dad]

I do not see where the UAW has registered "Strike!" as a trademark, although my search was admittedly a limited one. Did my search miss the UAW's mark or was your use of the UAW for illustrative purposes only?

It was merely illustrative, as "strike" was the first baseball word I thought of and the UAW was the first non-baseball entity I thought of that might use such a word

but we are speaking of two producers of apparel. If one has a trademark for the use of the mark on apparel, then they have the mark on the use of applying it to apparel.

Correct. My post was only intended to address the question of how two entities in entirely different industries might come to conflict over the same word.

 

[quincy]

but we are speaking of two producers of apparel. If one has a trademark for the use of the mark on apparel, then they have the mark on the use of applying it to apparel.

It can get a bit fuzzier than the use of the same trademark on apparel by two different clothing makers if the registered trademark is a common word mark. I can see a few potential ways that the baseball tee-shirts might not be seen as infringing on the registered trademark apparel line.

Of course, knowing what the real trademark is would help.

If the registered trademark that identifies the company or product line is an arbitrary mark (that uses a common word in an uncommon way), the company has the ability under trademark law to prevent all confusing uses - but the company cannot prevent others from using the common word in its common way.

Using single317dad's example of "strike," someone can be prevented from using the registered trademark "Strike" to identify their clothing line or to confuse consumers into thinking clothing is made by "Strike" when it isn't. But someone can use "strike" when referring to baseball or bowling or a union strike.

So, it could potentially be possible for a tee-shirt to have the word "strike" on the front of it, with perhaps a picture of an umpire or bowling pins or Jimmy Hoffa (to eliminate any confusion over the common word's reference). Consumers would not (necessarily) be confused into thinking that the tee-shirt was part of the "Strike" clothing line (unless, of course, this is exactly the type of clothing the company with the "Strike" trademark creates ).

And, of course, there is always the issue of competing goods.

Facts definitely matter but I think stopping the sale of the tee-shirts is smart. CoCoYaYa needs to have the specifics personally reviewed by an attorney in Wisconsin. I think you might have struck on something with your example that uses the word "strike," though, single317dad.

 

[justalayman]

here is my suspicion:

registered owner of the mark does use it as an identifier for their apparel. OP simply wants to use the mark on apparel not suggesting an association with the apparel they are producing with the registered owner of the mark. Even if they are using it in a generic sense, I suspect it won't fly. as an example, let's presume the name North Face is the mark. Obviously North Face holds the right to use the mark on apparel but OP is a mountain climber and prefers to climb the north face of mountains so they had shirts made with something like;

North face, the only way to face

while it is not intended to link North Face with their wares, it surely could cause confusion since when people see North Face on apparel, due to their notoriety, the use of North face, even in the generic sense will likely cause readers to think of North Face apparel.


as an dissociated note: did you ever read about the guy the put South Butt on his clothing which North Face objected to and was suing the guy? To me it was an oppressive act on the part of North Face and should not have resulted in the termination of South Butt apparel.

 

[quincy]

here is my suspicion:

registered owner of the mark does use it as an identifier for their apparel. OP simply wants to use the mark on apparel not suggesting an association with the apparel they are producing with the registered owner of the mark. Even if they are using it in a generic sense, I suspect it won't fly. as an example, let's presume the name North Face is the mark. Obviously North Face holds the right to use the mark on apparel but OP is a mountain climber and prefers to climb the north face of mountains so they had shirts made with something like;

North face, the only way to face

while it is not intended to link North Face with their wares, it surely could cause confusion since when people see North Face on apparel, due to their notoriety, the use of North face, even in the generic sense will likely cause readers to think of North Face apparel.


as an dissociated note: did you ever read about the guy the put South Butt on his clothing which North Face objected to and was suing the guy? To me it was an oppressive act on the part of North Face and should not have resulted in the termination of South Butt apparel.

Like you, I suspect that there is not an adequate defense to the use of the registered trademark on the baseball tee-shirts, but the use by others of a common word can be harder for the trademark holder of a common word mark to enforce.

There was a case in Massachusetts a few years ago over the use of the word "unleashed" (see: Unleashed Doggie Day Care Center, LLC v. Pet Co Animal Supplies Stores, Inc., No. 10-10742-GAO, 2010 WL 5207599, D. Mass, Dec. 16, 2010). The Court said that the Doggie Day Care could not stop others from using the word unleashed because the word was "descriptive." The Court also said that Doggie Day Care produced no evidence that their name had acquired a secondary meaning which could protect the "unleashed" portion of their name from use by others.

Of course, the facts here are different.

The South Butt founders (a 16 year old and dad team) had an amusing defense to North Face's claims of trademark infringement/tarnishment but I can see why their company had to be dissolved. Although South Butt's defense was parody, and they responded to North Face's claims of tarnishment with: "Defendants will certainly concede that their parody is immature, and, indeed, sophomoric and not tremendously clever," their products could be seen less as a parody and more as an attempt to profit off the North Face trademark and slogan through disparagement of the North Face marks.

I see the North Face suit as similar to the Coke/Cocaine suit. Parodies of trademarks can be difficult to pull off successfully. Disparagement or tarnishment of the mark is almost always a problem for the unskilled parodist.

North Face and South Butt did reach a (fair) settlement to the case but South Butt violated the terms of the settlement by starting another company that also parodied North Face . . . . . and that was not all that smart.

 

[justalayman]

I do have an issue with the coke/ cocaine issue. Coca cola was named because of two of its ingredients; an extract from the coca plant and an extract from the kola nut. It did have cocaine in it. They still use an extract from coca leaves (although it is from leaves the cocaine has already been extracted).


The only valid issue in that case, to me, was the artwork of the lettering style.