Help With understanding Trademarking T-shirts

[psychomike18]

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

I have been selling a T-shirt "be nice to me my wife is pregnant" for years now, initially there wasn't any copyright on it, so we proceeded to sell it.

Today I receive a Message from a company stating they own tradmark rights to that design. Not a Problem, but I have some questions about this.


All i can find about a trademark is, basically, its a business identifier. Like mcdonalds, im lovin it- or the happy meal.

The business name that contacted me did not match the name on the trademark, although they mentioned the correct name in the message.

They have several trademarks for random words on a shirt. One being "worlds okayest" and "The Man"

Can someone do that, being a trademark? Its not a line of clothing, slogan, or business identifier. simply that is the words on the shirt. So if I currently sell a " worlds okayest brother in-law" i am infringing on the trademark?

I would really appreciate any help, I do not want to get into any legal trouble, But for some reason i don't believe a trademark was appropriate, rather than a copyright. As well, what is considered trademark infringement, referring to words on a shirt. So Someone could trademark the word "the" and that can no longer be included on anyone else's design?

 

[quincy]

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

I have been selling a T-shirt "be nice to me my wife is pregnant" for years now, initially there wasn't any copyright on it, so we proceeded to sell it.

Today I receive a Message from a company stating they own tradmark rights to that design. Not a Problem, but I have some questions about this.


All i can find about a trademark is, basically, its a business identifier. Like mcdonalds, im lovin it- or the happy meal.

The business name that contacted me did not match the name on the trademark, although they mentioned the correct name in the message.

They have several trademarks for random words on a shirt. One being "worlds okayest" and "The Man"

Can someone do that, being a trademark? Its not a line of clothing, slogan, or business identifier. simply that is the words on the shirt. So if I currently sell a " worlds okayest brother in-law" i am infringing on the trademark?

I would really appreciate any help, I do not want to get into any legal trouble, But for some reason i don't believe a trademark was appropriate, rather than a copyright. As well, what is considered trademark infringement, referring to words on a shirt. So Someone could trademark the word "the" and that can no longer be included on anyone else's design?

Trademarks are used to distinguish one company's goods or services from those of all others so consumers know the origin of the products/services being marketed. If every company called itself "McDonald's," consumers would not know where to buy their Egg McMuffins.

Trademarks can be company names, the names for the products or services these companies market, the slogans used in advertising the companies' goods/services, the logos used for graphic identification, short phrases, distinctive colors or color combinations, smells ... there are a lot of ways companies can make their companies and their products and services stand out from others so consumers will recognize them.

The more distinctive the trademark, the easier it is for consumers to connect that trademark with a particular product or service.

Trademark infringement centers on consumer confusion. Consumers would be confused if other fast food restaurants were called McDonald's and sold Egg McMuffins.

The phrase that is in question - "Be Nice To Me My Wife Is Pregnant" -was registered as a trademark with the USPTO on June 2, 2015, by Neat Print Inc, so the phrase you have been using on your tee shirts is in fact a protected mark.

In addition to trademark infringement, another problem you could have with your tee shirts (if the notice you received in fact said "design") is copyright infringement. If your tee shirts are using an image or design created by someone other than yourself, you could be infringing on a copyrighted design.

As a note on the use of a common word like "the" for a trademark: It is possible to have trademark rights in a common word if the word is used in an uncommon way. For example, the common word "arrow" cannot be protected as a trademark for arrows but is protected as a trademark for Arrow shirts.

You can have the notice you received and the tee shirts you market personally looked at by an IP professional in your area to verify the claims in the notice. It appears the claim of infringement has merit.

Has the rights-holder who contacted you demanded anything of you?

 

[psychomike18]

Thank you for the reply.

No they have not, only requesting to stop selling the Trademarked item within 48 hours.

Thank you for clarifying the trademark. It was somewhat confusing considering " Be Nice To Me My Wife Is Pregnant" does not identify the company. Simply the word-mark. So I was unsure if it was a legitimate issue.

Do you have any enlightenment on the other situation mentioned?

For an example:

"Worlds okayest" In a vague sense being trademarked, So a Shirt saying "worlds okayest brother in law" is within their trademark?

I was under the Impression If I wanted to protect any of our designs I would have to file for a copyright, however Seeing a trademark being cheaper that would be the best way to go.

 

[Taxing Matters]

I was under the Impression If I wanted to protect any of our designs I would have to file for a copyright, however Seeing a trademark being cheaper that would be the best way to go.

Copyright and trademarks are different things. As stated by the U.S. Copyright Office, copyright is a protection given under federal law for “‘original works of authorship”, including literary, dramatic, musical, architectural, cartographic, choreographic, pantomimic, pictorial, graphic, sculptural, and audiovisual creations.” The copyright protection begins from the moment the work is fixed in some medium, i.e. words written on a page of paper, image imprinted on film in a camera, a song recorded on audio tape, etc. Registration is not needed to obtain the copyright but is needed to enforce the copyright. Quincy has already explained trademark law. It is possible for some works to be both protected by copyright and by trademark, but the protection of each is different, and the damages you might seek for infringement is different for each as well. So this is not a situation of picking just or or the other to protect the work based on what is cheaper to register. You first need to determine what it is that you have: a trademark, a copyright, or both and then go from there.

 

[quincy]

Thank you for the reply.

No they have not, only requesting to stop selling the Trademarked item within 48 hours.

Thank you for clarifying the trademark. It was somewhat confusing considering " Be Nice To Me My Wife Is Pregnant" does not identify the company. Simply the word-mark. So I was unsure if it was a legitimate issue.

Do you have any enlightenment on the other situation mentioned?

For an example:

"Worlds okayest" In a vague sense being trademarked, So a Shirt saying "worlds okayest brother in law" is within their trademark?

I was under the Impression If I wanted to protect any of our designs I would have to file for a copyright, however Seeing a trademark being cheaper that would be the best way to go.

First about copyrights: A copyright is automatic when an original and creative work is fixed in a tangible form (words to paper, paint to canvas, music to recorder ...). Any original and creative work is protected under copyright law with no registration of the work required (there are exceptions for works in the public domain).

The copyrights can be registered with the US Copyright Office for a small fee - and there are advantages to registering a copyright - but registration is not a legal necessity. The copyright exists without it.

As to trademarks, "World's Okayest" is a registered trademark, again registered by Neat Print Inc. The trademark holder potentially can prevent anyone from using the same or similar mark on the same or similar goods, if the use of the mark confuses consumers into thinking the goods come from the same company or if the second user's use dilutes the value of the goods marketed by the first user.

Trademark rights arise from the use of a name (phrase, slogan, logo, etc) in commerce as an identifier for goods/services. In the US, it is presumed that the first user of a mark as an identifier is the holder of the rights in that mark. As with copyrights, registration of a trademark in the US is not a legal necessity to have rights in the mark.

Because the company with the trademarks is not asking for compensation from you or seeking to take legal action against you (at least at this point), simply removing the infringing items from their places online and ceasing all future uses of the registered marks appears to be all you need to do to satisfy this trademark holder. Should you receive a letter demanding compensation or should you receive a summons and complaint for trademark infringement, that is the time a consultation with an IP attorney will be wise, prior to responding to either.

To search for registered marks, you can go to the USPTO website and do a trademark search. Here is a link: http://www.uspto.gov Remember, though, that even if a mark (or a copyright) is not federally registered, there can be someone holding rights to the mark (copyright).

It is best to assume all works you did not create yourself are copyright-protected and will require permission from a copyright holder to use. It is best to check that words you want to use on tee shirts are not already someone's trademark.

One additional note: To register a copyright it costs $35. Registering a trademark is far more expensive (registration for each class is $325 when filing electronically).

Good luck.

 

[psychomike18]

Thank you for the detailed explanation.

I have a much better understanding. I find alot of things trademarked, that are 1-3 words. If those words are included am I Infringing? I do not want to do that, I have already removed such listings. However, Like mentioned, "worlds okayest" in my opinion couldn't be confused with "Worlds okayest brother in law". However, my opinion doesn't matter.

From what I "think" I understand, is worlds okayest, Vs Worlds okayest brother in law is a situation that would have to be determined if Infringement were filed, if consumers confused the original work versus the latter. As well, if it degraded the original trademark in any way. If Neither can be proven, then it wouldn't be an issue.

Please clarify that for me if possible, Like i said, i'm not trying to Infringe on a trademark or copyright, Some of these things I have been selling for years, from personal requests or experiences. Example being, I wanted to make a shirt for my brother in law- and went with that- With no intentions of someone else already owning the rights.

Thank you for the already given information, I Truly Appreciate the advice. If something ever happened, I would most definitely talk to a local professional. I am just trying to prevent that from ever being an issue. As well, Thank you for correcting me on the copyright prices, It will help with future ideas that are not trademarked/copyrighted that I am within reach to do so to protect myself from this happening.

 

[quincy]

Thank you for the detailed explanation.

I have a much better understanding. I find alot of things trademarked, that are 1-3 words. If those words are included am I Infringing? I do not want to do that, I have already removed such listings. However, Like mentioned, "worlds okayest" in my opinion couldn't be confused with "Worlds okayest brother in law". However, my opinion doesn't matter.

From what I "think" I understand, is worlds okayest, Vs Worlds okayest brother in law is a situation that would have to be determined if Infringement were filed, if consumers confused the original work versus the latter. As well, if it degraded the original trademark in any way. If Neither can be proven, then it wouldn't be an issue.

Please clarify that for me if possible, Like i said, i'm not trying to Infringe on a trademark or copyright, Some of these things I have been selling for years, from personal requests or experiences. Example being, I wanted to make a shirt for my brother in law- and went with that- With no intentions of someone else already owning the rights.

Thank you for the already given information, I Truly Appreciate the advice. If something ever happened, I would most definitely talk to a local professional. I am just trying to prevent that from ever being an issue. As well, Thank you for correcting me on the copyright prices, It will help with future ideas that are not trademarked/copyrighted that I am within reach to do so to protect myself from this happening.

You will want to avoid using the word "okayest." The word "okayest" is an invented word and protected from use by others through its registration with the USPTO.

You can use "world's" as that is not protectable on its own and was disclaimed by the trademark holder.

In other words, you can market tee shirts that say "The World's [Adjective] Brother-in-Law" if the adjective you use is original to you or generic. You cannot market tee shirts that use words that are trademark-protected if your use works to confuse consumers as to the origin (and quality) of the goods.

Any phrase you want to use should be checked in advance by doing a thorough trademark search - and any image or design you want to use should be a design original to you (not the same or substantially similar to the creative work of another).

If you have a question about whether a proposed design or phrase infringes on the rights of another, you can have the specifics looked at by an IP professional in your area. It can be difficult to come up with original and creative sayings and designs - which is one reason why those who DO come up with original and creative sayings and designs are afforded legal protection.

Good luck.