How far can a "Common Law Trademark" protect you? Help needed.

[Basikboy]

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

I have a Graphic T-Shirt business and recently I was hit with a Cease and Desist on my personal website and my Ebay selling account. The T-Shirt design in question is "This Guy Needs A Beer" which also has to thumbs gesturing towards the person wearing the T-Shirt. Well the company that sent the Cease and Desist has a Trademark for "This Guy". Now I have been selling this design since 2008, admittedly I never had it Trademarked but according to their mark I was using this slogan far before they were and I have sale receipts to prove it. Not only did i receive a Cease and Desist, my best selling avenue Ebay has sent me a warning now and threatened my selling privileges if this happens again! I need to know If I can fight this somehow and have the strike from Ebay removed as well.

I just now found out "This Girl" has also recently been trademarked. I have had a "This Girl Needs A Beer Design" since 2008 as well so I may have to fight this as well. Any help and or feedback is much appreciated. Thank you for your time!

 

[justalayman]

Is the c and d from Alternative Building Systems? That is who appears to own the phrase when associated with the thumbs pointing gesture.

here is a link to a site that explains your rights fairly simply.

http://www.fr.com/prior-user-vs-federal-registrant--whose-mark-is-it-anyway1/


Your prior use does establish your rights BUT there are limits now that the newer user has registered their mark. To your benefit would be the fact you have proof of your use. You have proof it was distributed on a nationwide basis. That is very important in your battle since the law allows continued use but not expanded use of the mark based on prior use.

the bigger point I see is: what are you willing to do to protect your claim to the mark? is this worth $$$$ to you to fight their registration?

here is a link from the USPTO that is a publication of the process of obtaining a TM registration. In it you can see where a registration is contestable and when it becomes more or less indisputable.

another thought here as well:

your artwork is protected under copyright law. Depending on how close their artwork is to yours you may be able to argue against their use of their mark, not under a TM rights issue but one of a copyright issue. If successful, even if they continue their TM registration, they couldn't use it based on your rights to artwork. There are situations where independent creation could allow them to have a claim to their work under the copyright issue but given you have sold this on a nationally recognized site, it makes it more difficult to prove their creation was simply a coincidence that it so closely resembles your artwork.

 

[Basikboy]

Is the c and d from Alternative Building Systems? That is who appears to own the phrase when associated with the thumbs pointing gesture.

here is a link to a site that explains your rights fairly simply.

http://www.fr.com/prior-user-vs-federal-registrant--whose-mark-is-it-anyway1/


Your prior use does establish your rights BUT there are limits now that the newer user has registered their mark. To your benefit would be the fact you have proof of your use. You have proof it was distributed on a nationwide basis. That is very important in your battle since the law allows continued use but not expanded use of the mark based on prior use.

the bigger point I see is: what are you willing to do to protect your claim to the mark? is this worth $$$$ to you to fight their registration?

here is a link from the USPTO that is a publication of the process of obtaining a TM registration. In it you can see where a registration is contestable and when it becomes more or less indisputable.

another thought here as well:

your artwork is protected under copyright law. Depending on how close their artwork is to yours you may be able to argue against their use of their mark, not under a TM rights issue but one of a copyright issue. If successful, even if they continue their TM registration, they couldn't use it based on your rights to artwork. There are situations where independent creation could allow them to have a claim to their work under the copyright issue but given you have sold this on a nationally recognized site, it makes it more difficult to prove their creation was simply a coincidence that it so closely resembles your artwork.

Thank you for replying justalayman. I am not out for blood here, I would just want to be able to continue my sales of said designs and also not have to worry about my selling accounts being in jeopardy. That is my biggest concern as most major selling avenues such as Ebay, Amazon, Etc. do very little checking if any at all when a Trademark holder messages them about sellers Infringing and they immediately remove the listings and could possibly suspend your account which many companies heavily rely on myself Included.

I ALWAYS do Trademark/Copyright searches before I create a design however a have at least a dozen or so designs I can think of now have been trademarked by various companies. Now, these designs in question are not original or unique really, in the graphic T-Shirt business many, many sellers have very similar designs and slogans used just with their spin on it. And believe it or not, most companies are okay with that. What I believe happens is certain companies pick up on what is a "hot seller" other sites are using and they run to trademark those particular slogans.

Basically I want to protect my selling accounts as they are very Important to my lively hood. I want to be prepared In the event I am hit with a Cease and Desist and my selling account is ultimately suspended and I lose a good portion of my Income. What I have been doing as of late is doing Trademark searches on the slogans I have already at least once every few weeks. To my surprise quite a bit have now been trademarked and I am forced to pull my listings down to avoid any problems but I am slowly losing all my designs and I would like to see how I can combat that with the "common law trademark" if I can prove sales before the Trademark was applied for.

Once again, thank you so much for any help and or feedback. I truly appreciate your time.

 

[justalayman]

I would like to see how I can combat that with the "common law trademark" if I can prove sales before the Trademark was applied for.

actually, trademark rights are established by what you want to call a common law trademark. Use of a mark in commerce is what establishes a persons rights to that mark. Registration affords greater rights as well as is a forum for establishing ones claims to those rights but they do not supersede rights already established by others.

part of the issue is; you are not using it as a trademark so you cannot defend it as such. You simply want to be able to use the work as art without any claim to it as a trademark. In a way that is simpler than if you did wish to use it as a trademark. You are not competing with the registered owner so all you have to do is establish your rights to continue to publish the art. You have a good basis for being able to do that since

1. you designed your work making you the owner of the copyrights to your work

2. you have proof of use prior to the registered owners claim of use

3. since you are not defending it as a trademark, it helps by the fact you are not competing with them in offering services or products but simply claiming rights to your art


one additional matter is; how are they using this as a trademark? You and they need to understand a trademark is not simply using artwork but using the art to represent your company is some way. What company is their mark representing? Is the mark used in ways other than tossing it on a t-shirt with no actual association with a company?

Thank you for replying justalayman. I am not out for blood here, I would just want to be able to continue my sales of said designs and also not have to worry about my selling accounts being in jeopardy. That is my biggest concern as most major selling avenues such as Ebay, Amazon, Etc. do very little checking if any at all when a Trademark holder messages them about sellers Infringing and they immediately remove the listings and could possibly suspend your account which many companies heavily rely on myself Included.

Your biggest problem is not the registered owner of the mark but the venues you use to sell your art. They are not bound by law to continue to sell your art regardless of your legal rights to do so. They can simply say; sorry but we are not going to allow you to sell your shirts on our site.

there is nothing you can do to force them to allow you to sell any particular product regardless of your rights or reasons.

 

[Basikboy]

Actually, If I am able to convince the company that asks these selling avenues to withdraw their complaint then I am okay. My concern is how to get said companies to do so. I am afraid if I email myself they could use it against me somehow. Hope I am making sense here. Thanks again!

 

[quincy]

Actually, If I am able to convince the company that asks these selling avenues to withdraw their complaint then I am okay. My concern is how to get said companies to do so. I am afraid if I email myself they could use it against me somehow. Hope I am making sense here. Thanks again!

justalayman provided you with some excellent information. I agree with him that there is little you can do to ensure the selling avenues currently closed to you as a result of the infringement notice will be reopened. That is a decision that is left entirely to the online venues.

There are a few ways to handle a cease and desist notice.

One way is to ignore the cease and desist letter and hope that the sender takes no further action against you. This can be legally risky. You could be sued. This also seems to be an option that will not address your concerns over the marketing of your tee-shirts and the places where you can market them.

Another way is to respond to the cease and desist notice, either by denying the infringement and citing your reasons (with evidence to support these reasons), or by trying to settle the demands made in the cease and desist, as a way to halt any further legal action being taken against you and perhaps work out a suitable compromise.

Another way is to file a declaratory judgment, allowing a court to determine who has rights under the law to the copyrighted works or trademarks in question. The court will not order that any action be taken either way. The court merely issues its opinion as to ownership and the parties go from there. This could work in your favor - or not. It depends on the facts presented and how a court weighs them.

The best way to avoid any legal action over your creations is to be completely unique and original in your designs and catch phrases. This is the most time-consuming, of course, and this is not always or even usually a fast money-maker, but it will always be the best way to build a business that can be said to be distinctly your own.

While it is good to see you back on the forum, Basikboy, I am sorry that what brings you here is your receipt of a cease and desist letter. Defending your business and your products from real or false claims can be, unfortunately, a part of operating a business like yours (albeit one of the most unpleasant parts). You will now need to decide how much time, effort and money you wish to invest. Consulting with an attorney in your area, who can personally review the notice received and the businesses involved, and who can then go over your possible responses to the cease and desist and the pros and cons of each, is wise and advised.

Good luck.

 

[single317dad]

I assume the date of January 1, 1970 entered for "first use" is a default when no date is entered. I'd place the actual first use date in this context around 2000.

Apparently the examiners at the USPTO don't get out much. Using thumbs pointed to oneself and saying "this guy" is as much of the youth jargon these days as "groovy" or "awesome" was for previous generations. I don't get how ABS was able to secure trademark registration; their design and use does not create any distinctive secondary meaning of this common phrase. In fact, the design submitted is exactly the way the phrase is commonly used. There is nothing in their product which distinguishes their phrase or usage from the common parlance. People know where to go to buy a Big Mac; no one knows ABS as the source of "this guy" athletic apparel. Were they even the first to sell a t-shirt? It seems not.

All that said, OP, you need to follow Quincy's advice and consult a qualified attorney to help you protect your livelihood.

 

[quincy]

... I don't get how ABS was able to secure trademark registration; their design and use does not create any distinctive secondary meaning of this common phrase. ...

One way for a WEAK mark to find its way to the Principal Register is through acquiring a secondary meaning in the marketplace, but another way for a weak mark to find its way to the Principal Register is for a weak mark to be used in commerce continuously for five or more years.

There is a presumption by the USPTO that a mark that is used for that length of time will have acquired a secondary meaning and that the consuming public will associate the mark with the product or service (whether consumers do or not). This continuous use in commerce makes the trademark eligible for placement on the Principal Register.

That is why you have some rather unoriginal, not very creative, not very clever and not at all distinctive trademarks on the Principal Register.

 

[Basikboy]

Thank you so much again for all the feedback everybody! It is very appreciated. I agree with most of you that I am pretty much at the mercy of the "major" selling avenues regardless so I may have to change my approach all together. See, I need these major selling avenues as they produce so much more traffic then my own website and In order to make sales I need them. What I was thinking Is go with what a couple responders said, completely original designs. I am even thinking of taking it one step further and making T-Shirt designs that have no wording whatsoever so I can just copyright them and also be free from any other companies bothering me about any sort of Infringement. It will be a tricky process as the slogan based designs have been what sells for me for many years but I am tired of looking over my shoulder and I have to solidify my company for the future so I am hoping this will be the road to go down.

 

[Basikboy]

Did some more Trademark searches this morning and it seems "This Girl" is now also Trademarked! Guess who has shirt designs that read "This Girl Needs A Beer", "This Girl Loves Her Boyfriend", "This Girl Loves To Party!", this guy! (pun intended). I don't see how these people/companies can keep trademarking generic slogans like this! Very frustrating to say the least.

 

[single317dad]

I don't see how these people/companies can keep trademarking generic slogans like this!

The same way Apple can win a huge patent case based on a device with a flat face, four rounded corners, a speaker, and a place for a button.

 

[Basikboy]

Now, I do have a couple dozen copyrights that I hold for my designs. I thought at the time this was the best route for me considering I believed trademarking was only for a "brand" when I sell over 400 plus designs it would be hard for me to brand each individual design plus I believe this would be trying to manipulate the system (even though I am positive a few sites similar to mine are doing just that). Do I have any leverage over another company that may try to come along any trademark a design I already have copyrighted? For Instance, let's say I have a design titled "Let's Get Crazy!" copyrighted in 2009 and another company tries to trademark that same slogan in 2014 what would happen?

 

[quincy]

Now, I do have a couple dozen copyrights that I hold for my designs. I thought at the time this was the best route for me considering I believed trademarking was only for a "brand" when I sell over 400 plus designs it would be hard for me to brand each individual design plus I believe this would be trying to manipulate the system (even though I am positive a few sites similar to mine are doing just that). Do I have any leverage over another company that may try to come along any trademark a design I already have copyrighted? For Instance, let's say I have a design titled "Let's Get Crazy!" copyrighted in 2009 and another company tries to trademark that same slogan in 2014 what would happen?

If you were not using "Lets Get Crazy!" as a trademark, it is entirely possible that someone could decide to use that to identify their products or services and seek to get it federally registered. You can show first use of the phrase, perhaps, but that does you little good if you cannot afford to fight any cease and desist demand you might receive.

What could perhaps help you, Basikboy, is to start marketing your tee-shirts under your own trademark (for example, selling all of your shirts under a federally registered "Basikboy" label). That way, consumers will start to identify your shirts with your trademarked name and it can be harder for others to infringe on your works and it can be easier for you to stop those that do.

The designs on your shirts (if creative and original enough) are already protected under copyright laws but by having each of your shirts labeled with your mark gives you additional protection under trademark laws.

That said, the problem is always going to be defending your rights against an infringer. This can be costly. Before suing a copyright-infringer, for example, you must register your copyright. If you have several different designs, the costs add up. You have to decide if the costs to defend your rights outweigh your potential losses if you don't. What helps with copyright infringement, though, is you can always file a DMCA takedown notice to any site with products using your designs.

I think it could be smart for you to federally register a trademark that identifies your tee-shirt products, so you have the presumption of ownership in the name.

There are laws that can protect your designs and your products but you must be prepared to take action against your infringers (either those that infringe on your designs or those that infringe on your phrases or those that infringe on the trademark you use to identify your designs and products). If you do not send out cease and desist letters of your own, or sue to stop your infringers, they will continue to infringe - taking of yours what they find profitable and leaving you with your rights un-asserted.

 

[kevin.murphy]

Actions for infringement & injunction relief.

The use of a trademark is the owner's way of preventing others from duping consumers into buying a product that they mistakenly believe is produced by the trademark owner. A trademark informs people that trademarked products come from the same source. The ultimate test is whether the public is likely to be deceived or confused by the similarity of the marks.

 

[quincy]

The use of a trademark is the owner's way of preventing others from duping consumers into buying a product that they mistakenly believe is produced by the trademark owner. A trademark informs people that trademarked products come from the same source. The ultimate test is whether the public is likely to be deceived or confused by the similarity of the marks.

A trademark's purpose is to distinguish one class of goods or services from another. The use of the same or similar trademark to identify the same or similar goods could potentially confuse consumers as to the origin of the goods/services.

But, while trademark infringement perhaps centers on evidence of consumer confusion (or the likelihood of confusion), the use of the same or similar trademark can also dilute the value of a trademark.

There is not necessarily any intention of trickery or "duping" involved with trademark infringement, though. There are several trademarks that are the same or similar, even on the same or similar goods, and these are able to happily coexist because the consumer markets are separate (say, one sells goods in California, one sells goods in Florida). It is only when one same-named company decides to cross into another's market that confusion could arise.

As a note: If someone is planning to pay for assistance with a trademark issue, it is best to find an IP attorney in their own area for this personal review of the facts instead of paying for advice from an online service.