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[J32]

Hello,

first I have to say I do not know much about trademarks, copyright laws. As for trademarks I simply look through the TESS database and see if a wording is trademarked for a specific product. I tried to read myself into the topic, but my understanding of the english language doesn't seem to be good enough.

I have a store on a print of demand service, where I can put my designs or simple text on products such as shirts, cards, buttons and so on.

I made a button with a blue background and the wording "Drama Queen". A day after publishing this button, I received an email from the print of demand service that this button would infringe intellectual property rights and that the right holder had reported it to the POD service. I have information about who is the right holder who reported it.

Therefore the button had just a blue background and a colorized wording on it I assumed it to be a trademark and searched the right holder on TESS. Here is the information I found on the their mark:

Word Mark      DRAMA QUEEN
Goods and Services    IC 025. US 022 039. G & S: 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    78356635
Filing Date    January 23, 2004
Current Filing Basis    1A
Original Filing Basis    1B
Published for Opposition    November 16, 2004
Registration Number    3220497
Registration Date    March 20, 2007
Type of Mark    TRADEMARK
Register    PRINCIPAL
Live/Dead Indicator    LIVE

I thought that a trademark is only theirs for the registered goods and services. Therefore I do not see any buttons in the list of goods, I think I did not infringe their trademark. Am I right??

Any advice or help, explaination would be appreaciated.


EDIT: I just read this topic http://www.intelproplaw.com/ip_forum/index.php/topic,13415.0.html where the phrase "dama person" is the issue and it seems to be the same company.

[klaviernista]

The short answer to your question is, "it depends."

The test employed when determining trademark infringement is "likelihood of confusion." That is, infringement occurs when a trademark is used in conection with the sale of goods or services if it is likely that consumers would be confused as to the source of those goods/services.  A court considers multiple factors when determining likelihood of confusion, including: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the similarity of marketing channels used; (6) the degree of caution exercised by the typical purchaser; (7) the defendant's intent. See Polaroid Corp. v. Polarad Elect. Corp., 287 F.2d 492 (2d Cir.), cert. denied, 368 U.S. 820 (1961).

So, of the 7+ factors considered by the courts, only one relates to the proximity of the allegedly infringing goods/services to the goods/services associated with the registered mark.

[J32]

So if a trademark infringement is falling under "likelihood of confusion" is open for interpretation of the right holder? Means if he thinks it is confusing customers he can say it is trademark infringement?

[BobRoberts]

I'm assuming that you're an American Company (or company that does business in America)...  Trademarks are territorial, and I'm not competent regarding international TM law (or some would probably say US law as well)...

You said:
"I have a store on a print of demand service, where I can put my designs or simple text on products such as shirts, cards, buttons and so on."

If I interpret your post correctly, the person clicks the link/button you provided at your website (the button including possible wording for a clothing item), and you provide an article of clothing (or the other items) having that particular verbage/wording ?  If this is the case, it appears that you could have a problem...
Even if you don't manufacture/print the clothing items yourself, it would seem reasonable that selling the service to provide clothing to others with a protected mark could be considered confusing to a person (i.e., that you are associated with the actual owner of the mark used on clothing)...

If the words "Polka Dots" was a protected mark by Company A as used in conjunction with T-shirts, and you are selling T-Shirts with the words "Polka Dots" written on them, I would think it to be reasonable that a buyer could confuse you as being associated with Company A.  Now if "Polka Dots" was protected as an extremely stylized design, and there were already several other renditions of "Polka Dots" verbage on T-Shirts prior to Company A use (or in some cases, since Company A's usage if the other instances have been around commercially for several years), and your use of "polka Dots" looked nothing like Company A's, then it might be OK...  Really depends on the particulars of the situation...

And, it usually isn't a good idea to put your exact situation on the internet...  That is why I spoke of only generalities in my post...

Good luck. 

As mentioned above, there are many factors in a true likelihood of confuson test that need to be considered, so a simple 2 minuteslook will not do you justice...

 

[artchain]

So if a trademark infringement is falling under "likelihood of confusion" is open for interpretation of the right holder? Means if he thinks it is confusing customers he can say it is trademark infringement?

The original trademark holder can "claim" whatever they want.  In the normal course of business, if you disagreed with the claims, you could ignore them, and if the trademark holder chose to take legal action, the matter could be resolved in court. 

However, in your case there is a third party involved...  the POD service.  And these services are not interested in a legal fight on your behalf.   

Under the Terms of Use you agreed to when you signed up for the service, they probably have the right to remove your content at any time, with or without cause. 

So i this situation, I think you have very little practical recourse, regardless of the merit (or lack of merit) of the trademark holder's claim.




 

[J32]

Yeah I will not get myself sweat over a lousy button. I am simply just curious about how it works.

@BobRoberts Here you mentioned my exactly point. I did not put the trademarked wording on clothing or any other products they have the wording trademarked on. I put it on a button. Nothing else.

If trademarks are product specific and they still can claim infringement on products they do not have registered in their trademark, the whole product specific thing seems useless to me.

Well that is why trademark stuff is so confusing to me. It has rules to break their own rules. So why they have rules? On the end I think that trademarks should be for brand names not for designs on products they sell. I thought that is what copyrights are for.

[JSonnabend]

You and the other poster could possibly join forces and face down this apparent bully.  Contact me off forum if you want me to put you in touch with the original poster of the other thread.

- Jeff