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[Metrostar]

So here is the situation. I have a store hosted by a company. I upload designs and people buy them. On shirts, mugs, mousepads, things like that.

I put this on a shirt and a tote bag:

http://i183.photobucket.com/albums/x15/somebodylikeyoufans/countrygirl.jpg

And now it's been removed. I think, because there is a store called "Country PERSON." But isn't "Country PERSON" just a phrase that we all use to describe a girl from the country?

On the Country PERSON website at http://www.countrygirlstore.com there is a notice that says, "Country FEMALE PERSON ® &  Country MALE PERSON ® are registered trademarks of LML Investments, LLC."

I didn't see this before today, not that ignorance is an excuse, but I would love to know why and how someone can get away with taking a common phrase and owning the rights to it. I am a bit shocked by this as you might be able to tell.

I've just written to the store host about this and asked if adding the words "I'm A" to "Country PERSON" is ok.

[JSonnabend]

You shouldn't post details of your situation on this public forum, as anything anyone says may be discovered by the other party, and possibly used against you.

That said, I believe your proposed change would avoid any infringement (not to say that your current use is an infringement, a question about which I offer no opinion).

Finally, regarding your issue with "common phrases" as trademarks, aren't "Apple", "Champion", "Staples", "General Motors", etc. all "common words or phrases"?

- Jeff

[klaviernista]

The mere fact that words are common has nothing to do with whether they are eligible for registration as a trademark.  It's all about the relationship of the mark to the goods and services associated with the mark.  E.g., the term "Apple" likely could not be registered in associated with produce because it is merely descriptive of the products or services, whereas that same term likely could be registered in relation to certain other types of goods and services, e.g., computers.

I ran a quick search on the US TESS database.  There are many registered country girl marks.  One you may want to consider is:

From Tess:

Word Mark  COUNTRY GIRL
Goods and Services IC 025. US 022 039. G & S: Sportswear and casual clothing, namely, [ pants, slacks, skirts, dresses, jumpers, blouses, shirts, ] tee-shirts, [ socks, shorts, jackets, hosiery, tights, scarves, sashes, ] hats [, caps, shoes, sandals, slippers, sneakers, athletic shoes, ties, cravats, ascots, swim trunks, sweatshirts and sweat suits ]. FIRST USE: 20040215. FIRST USE IN COMMERCE: 20040215
Standard Characters Claimed 
Mark Drawing Code (4) STANDARD CHARACTER MARK
Serial Number 78545515
Filing Date January 11, 2005
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition October 18, 2005
Registration Number 3041646
Registration Date January 10, 2006
Owner (REGISTRANT) Impulse Wear, Inc. CORPORATION OHIO 225 Business Center Dr. Blacklick OHIO 43004
(LAST LISTED OWNER) LML INVESTMENTS, LLC LIMITED LIABILITY COMPANY OHIO 225 BUSINESS CENTER DRIVE BLACKLICK OHIO 43004
 
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record Brad D. Rose
Type of Mark TRADEMARK
Register PRINCIPAL
Live/Dead Indicator LIVE

[blakesq]

I don't do litigation.  But, is there a way to attack a registered trademark by showing that the mark has been in use by others prior to the registration and/or application for the mark in issue?  I can imagine that other's have put "country girl" on t-shirts long before the trademark owner. 

[JSonnabend]

If enough other people are using the mark, then it's possible (but often difficult) to demonstrate loss of distinctiveness of the mark (a form of abandonment).

In this case, though, I wonder whether the OP would find such an undertaking worth the effort and expense.

- Jeff

[Kaitlin]

I can imagine that other's have put "[the trademark phrase]" on t-shirts long before the trademark owner. 

Note that just putting the expression on a few shirts by way of decoration wouldn't have been a trademark use. 
Has to be case of using the phrase to identify one's goods as coming from oneself as a particular source to be a trademark use. 

Gut feeling is that there is an inherent problem with the trend of using trademarks as decorations on clothing.   Feel there's a slippery slope here, effect of which is to use trademark law to try to reach what should properly come under copyright--and be subject to the exceptions therein.  No one can copyright a two word common expression such as the OP has used.  And since the 60's, T-shirts have been commonly used as a medium for self expression.  Feel that permitting trademark status for words used on T-shirts* is like permitting trademark status for protest signs sold with given phrases.   Could I use the peace sign as a trademark for pre-fabricated signs and then claim infringement if anyone else sold a sign with the peace sign on it?  That would run into first amendment problems for sure.  But isn't it also a problem to keep other people from selling goods with given descriptions or expressions which function as speech by the wearer?

Not sure how to tweak the law here without throwing other legitimate uses out of whack, but it deserves some thought I believe. 

*and then precluding any other uses of those words on such products

[Metrostar]

Thanks for your replies and the TESS look up. I have since heard back from the store host about this matter and another which is very frustrating and relative to this.

Firstly, the other matter, which was a design that said "FUTURE DRAMA PERSON" on an infant shirt. This was removed due to a complaint by someone who has trademark of "DRAMA PERSON." Unbelievable right?

So, the emails I got from the store host today are as follows:

Thank you for your email.

XXXXXXXXXX was contacted by XXX Investments, LLC, the trademark holder of the term "Country PERSON" and requested the removal of products that contained their trademarks. To avoid any legal action, it was decided that in the best interest of both parties to have these products removed from XXXXXXXXXX’s Marketplace.

Unfortunately the use of the the phrase "I'm A Country PERSON" will still be in violation of their rights.

Best Regards, XXXXXXXXXX

and...

Thank you for your email.

XXXXXXXXXX was contacted by XXXXX & XXXXXXX, Inc, the trademark holder of the term "Drama PERSON", and requested the removal of products that contained their trademarks. To avoid any legal action, it was decided that in the best interest of both parties to have these products removed from XXXXXXXXXX’s Marketplace.

Best Regards, XXXXXXXXXX

It amazes me that I can't use phrases on shirts that I would use to describe my wife for example. She is a "Country PERSON" from Virginia and sometimes even, a "Drama PERSON!"

I have a design in the store that says "Bleeding heart liberal" on it. I am wondering now if somebody owns that phrase too. *Chuckle"

Well, I guess there is nothing I can do, but just keep putting up designs and taking my chances. I certainly wont be going out of my way to see if someone owns "Soccer Mom" for example, before putting it on a shirt.

It's so frustrating. I think XXXXXXXXXX told me today that I can't put "MY WIFE IS A COUNTRY PERSON" on a shirt when she most definitely is one.

[Sabachka]

Re: "Gut feeling is that there is an inherent problem with the trend of using trademarks as decorations on clothing." That's my gut feeling too. I took a look at the website. I noticed that the trademark registrant doesn't appear to use the (R) symbol on the front of the shirts. Not that it's required, but it seems consisent with decoration theory idea.

[JSonnabend]

First of all, in my view, the website is probably wrong on all counts, particularly when they say that your proposed change would not avoid infringement.  It seems clear to me that they don't know what they are talking about and simply are trying to avoid legal tangles.

Second, I looked briefly at the David & Goliath registration, and I have some serious doubts about its validity.  It looks to me to be an ornamental use, not a TM use.

If this is important to you, perhaps you should have an attorney write to the website and/or the third parties?

Feel free to call me if you want to go over things preliminarily.

- Jeff

[Metrostar]

Hi Jeff,

I looked up XXXXX & XXXXXXX on Tess and found this entry:

Word Mark      DRAMA PERSON
Goods and Services    IC XXXX Baseball caps, boxer briefs, boxer shorts, briefs, pajamas, panties, shirts, slippers, socks, thongs, t-shirts, undergarments, underpants, undershirts, underwear. FIRST USE: 20040123. FIRST USE IN COMMERCE: 20040123
Standard Characters Claimed    
Mark Drawing Code    (4) STANDARD CHARACTER MARK
Serial Number    XXXXXXXXX
Filing Date    January XX, XX04
Current Filing Basis    1A
Original Filing Basis    1B
Published for Opposition    November XX, XXXX
Registration Number    XXXXXXXX
Registration Date    March 20, 2007
Owner    (REGISTRANT) XXXXX & XXXXXXX, Inc. ADDRESS XXXXX
Attorney of Record    XXXXXX X. XXXXXX
Type of Mark    TRADEMARK
Register    PRINCIPAL
Live/Dead Indicator    LIVE

What do you mean by "It looks to me to be an ornamental use, not a TM use?"

[JSonnabend]

I mean I looked at the specimen and it didn't look to me like the use in the specimen was a trademark use, but merely an ornamental use (search the forums for discussion on this). 

I haven't reviewed the records in any detail whatsoever, so please don't rely on my conclusion, but that is definitely my initial reaction based on my brief review.

- Jeff

[Metrostar]

Right, got it. "Drama PERSON" is what they are putting on the products, but that's not their trading name.

I posted a new design with "Drama PERSON" in the design. XXXXX & XXXXXXX (I see the irony) will enjoy reading it I'm sure.

http://i183.photobucket.com/albums/x15/somebodylikeyoufans/Clipboard01-94.jpg

I appreciate the moral support. Thanks.

EDIT: I previously wrote here that I thought that XXXXXXXXXX was blocking me from posting designs with "Drama PERSON" in the filename of the design. I no-longer believe this to be true.

Also, I don't know why I didn't think to do this before, but searching for "Drama PERSON" at XXXXXXXXXX garnered over 2000 results. I wish I had seen this before I sent this email to them this morning:

In response to your email, we have taken it upon ourselves to search the trademark database and there are no U.S. trademarks found for "I'm A Country PERSON" and there are no U.S. trademarks found for "Future Drama PERSON."

It is therefore our contention, that it is perfectly reasonable for us to put these slogans on our shirts until a trademark is registered for each of the slogans. Unless that trademark is registered by ourselves.

However, we would very much like to hear your opinion on this matter before we proceed with re-posting our designs.

In an effort to avoid any future products coming under content review, we will be looking up each design idea that has a phrase/slogan at www.trademarkia.com, If there is no trademark registered for said phrase/slogan, then we will proceed to post.

Thank you for your prompt replies to our emails, we are very pleased with the level of service at XXXXXXXXXX.

I would have asked why it's okay for every other Tom, Dick and Harry to have shirts with "Drama PERSON" on them?

[Kaitlin]

Something you need to be aware of is that a trademark does not have to be registered to be a trademark.  Searching the PTO database is not a way to cover all legitimate trademark uses and rule out a claim to legitimacy.  The PTO does not grant trademark status to marks.  Rather, they REGISTER marks upon request (and payment of fees, submission of forms, argument with examiners, etc.) that they consider to be appropriately used as trademarks. 

This is not to say that anyone who claims rights necessarily has them, just that they can get rights simply by using the mark to identify their goods as coming from one common source.  No registration is necessary (although registration gets you broader/stronger rights).  If they are first in time to do so (and haven't stopped using and abandoned the mark), then they have rights.  The extent of those rights depends upon how widely the mark is known in terms of geography and what sorts of goods/services the mark is used with in terms of channels of trade.  As always, the test for infringement is "likelihood of confusion" with another mark in the consuming public's mind.

---
Incidentally, I'll reiterate Jeff's earlier caution about not posting details in the forum--not just party names but also the phrasing alleged to be infringing.  As a former litigator, I know that admissions against interest can be deadly.  Even when people are in the right, they can inadvertently say things that get twisted against them.  It's not just in criminal cases that "anything you say can and will be used against you."  Anything the other side in a controversy hears you say that goes against your interests can be offered by them as evidence in litigation, even though it normally would be kept out of court as hearsay.   It may be too late to effectively do this, but you might want to consider going back and modifying your own posts (to delete the references) and asking others who've referenced the phrases at issue to do the same.  It's probably OK to substitute a similar sort of phrase so the issue is clear, but you don't want to have key terms here which someone who's out to get you could google and use to find this discussion.

[Metrostar]

Thank you Kaitlin, I had it in the back of my mind that my email wasn't 100% fool proof, but I was counting on XXXXXXXXXX not really knowing what they are doing and being satisfied enough with my email to let me do what I want.

I haven't heard back from them and rather than wait any longer, I have re-posted the "Future Drama PERSON" design. in the description for the product, i have put, "For more Drama PERSON designs search XXXXXXXXXX." A little childish I know, but what makes you feel better...

I have also posted two new designs in a humor category I have, these designs say "Country MALE PERSON, Deal With It!" and "Country FEMALE PERSON, Deal With It!" and both of these designs are in XXXXXXXXXX's "Humor, Sayings" category.

I'll post here if anything happens about that. I sincerely hope not.

[artchain]

Regarding your letter in defense of your design, I suspect this will make no difference to the company.

When you sign up with a print-on-demand site like Zazzle and CafePress, you agree to policies that allow them to delete or reject any designs you submit, for any reason (or without a reason).

These businesses are thin-margin, and avoid legal conflicts if at all possible.  Hence, if they get a complaint, they will generally reject your design and any similar designs.  It isn't a question of who is "right."

You may get lucky, but in general I've found that arguing doesn't help.