We were selling t-shirts about an athletic team that has been defunct since 1927.

I found the team written up in Wikipedia. Their logo was a picture of an igloo and their name. My illustrator cleaned up the igloo image. Under it, we typed the name of the team and "1926 - 1927."

Yesterday, we received a cease and desist letter from an author who wrote a book about this team. His book logo is an igloo with the team name and 1926-1927 written in Athletic Font.

Since I also used athletic font, my use of an igloo and athletic font violates his trademark.

I deleted all products and sent him an email. Today he emailed us that the products are still in the CP Marketplace.

I checked. They are there, but the links all lead to an error 404 page.

My partner called him. He explained that product links stay in the marketplace about 48 hours but don't lead to any purchases.

My partner asked him if he's claiming a trademark on igloos or the name of the team. He deferred an answer to his "intellectual rights attorney."

I looked up his attorney. His areas of practice are DUI, and sexual misconduct.

Since we sold 5 shirts in 3 years, we'll let this one go.

haha. I'm not laughing at you, but (hopefully) with you. I'm not a lawyer, but it smells fishy. While an image is automatically copyrighted upon creation and if your image is close enough to his, it could be copyright infringement, I seriously doubt he holds a trademark on the image. Being a bit of a headstrong ox sometimes, I'm almost tempted to do something similar just to push his buttons. LOL.

You could always do a TM search, but with only 5 sales in 3 years, it wouldn't be worth your time or $$$.

Good luck selling your other items. Hope you do well.

Today, I got this:

Thanks for your emails and calls. I trust that you are doing all you can to resolve this and appreciate your efforts.

I was explaining the situation to the book's author this a.m. and together we had a thought. You are correct that we make no claim over the name "(team name here)" or another igloo image so long as it does not look like our design and the fonts we used to distinguish the logo from others. But since you've apparently done quite a bit of work reconfiguring our image, I see no sense in your having to reinvent the wheel to create your own, new design. Instead, perhaps we could work out an arrangement in which you can use our image in exchange for an image usage fee or royalties.

Let me know what you think.

My advise would be to change your font and tell them to go pound sand. They admit they have no trademark claim, only that your design is too close to theirs, giving them a possible copyright complaint. Changing fonts should cure that problem.

Pay them a "usage fee or royalties"? HA!

Or reply back that you would be glad to license your design to them, and what a wonderful offer!

Pay them a royalty out of the 10% you make? Wow, that would be a few cents, then, wouldn't it?

quote:

Originally posted by Teesed:
Or reply back that you would be glad to license your design to them, and what a wonderful offer!

I KNEW you had a streak of evil somewhere in your soul. I love it!

This is an excerpt from my partner's letter:

Thank you both, sincerely, for the courtesy of your offer.

I checked my sales of the (team name) image set. I'm sure you and (author name) would consider this commission division arrangement below your threshold of interest.

Our bread and butter are public service group sales. We usually have links to our site from the group whose image we're using.

Since you already have your logo developed, you could have an employee load products of your own onto Café Press if you liked their terms of service.

I've dealt with (author name) before in his capacity with the (name of newspaper). I'm an infrequent but steady writer of letters to the editor. I apologize that this letter exceeds his usual receipt of 300 words.

quote:

Originally posted by KLC Lewis:

quote:

Originally posted by Teesed:
Or reply back that you would be glad to license your design to them, and what a wonderful offer!

I KNEW you had a streak of evil somewhere in your soul. I love it!

Oh, you have no idea.

I thought this thread would be about igloo beer coolers.

A subject I can relate too!

What you do is look them up and see if they have registered copyright or trademark:

http://www.copyright.gov/ - click on "search records"

http://www.uspto.gov/main/trademarks.htm - click on "search."

If no trademark or copyright is registered they cannot sue you. They COULD register later and then sue you, but could only collect 'actual damages' if they win the case (no legal fees or punitive damages.) They'd be spending around $20,000 just to sue you for a few shirt sales. Meaning, they wouldn't bother.

Read the FAQs at the copyright and trademark sites.

Additional note: The TESS database is not 100% definitive. It's not the final indicator and, as one might expect, may only yield quality results by someone who knows what/how to search for.

So, whatever you do or don't find... there may be more to it.

quote:

If no trademark or copyright is registered they cannot sue you.

Uh no. Ouch. To sue under Federal copyright law they do have to register a copyright first. Trademark, however, are different. Among other things trademark is not restricted to federal law. You can be sued for trademark infringement even if the mark is never federally registered. Copyright law and copyright rules cannot be applied to the trademark situation. They are fundamentally different.

This is what it says at the USPTO web site:

http://www.uspto.gov/web/offic...c/basic/register.htm

Is registration of my mark required?

No. You can establish rights in a mark based on legitimate use of the mark. However, owning a federal trademark registration on the Principal Register provides several advantages, e.g.,

* constructive notice to the public of the registrant's claim of ownership of the mark;
* a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration;
* the ability to bring an action concerning the mark in federal court;
* the use of the U.S registration as a basis to obtain registration in foreign countries; and
* the ability to file the U.S. registration with the U.S. Customs Service to prevent importation of infringing foreign goods.

So I guess you're saying you could still be sued in a state or lower court?

Yes- states also register Trade Marks; their Courts are available for actions as well.