SPACE MARINES Repeated as Farce

Remember the SPACE MARINES bogus “trademark” DMCA takedown notice? In that case, a markholder succeeded in temporarily blowing one by a sophisticated technology provider, Amazon. This time, with the Zazzle-π issue, we have a much more cynical version.

Zazzle is a successful print-on-demand online store. Designers upload their designs to Zazzle, and Zazzle makes them available to the general public, splitting the profit with the designer. Among other things, you can order T-shirts with a wide variety of designs on them. And because nerds are like that, there are a lot of T-shirts with some variant of pi (π) on them. I don’t know if you can rich doing this, but designers must make some money from this system, and buyers get to express their mathematical and/or punning nerdiness.

Zazzle then received a rather confusing demand letter from Ronald Millet, Esq.. It’s confusing because he starts of demanding that Zazzle “CEASE AND DESIST ALL COPYRIGHT INFRINGEMENT” (capitalization and bold in original) but then goes on to talk about his client’s amazing trademark registration.* The letter isn’t very specific, saying only that his client has noticed Zazzle’s use of “the mathematical symbol ‘pi,’ … in association with the marketing or sale of your products or of products offered through your services”; and demanding that Zazzle stop any “unlawful use of the PI trademark or any confusingly similar trademark in association with the sale, marketing, distribution, promotion or other identification of your products” blah blah blah.

The letter—which is almost indistinguishable from any number of trademark demand letters found in any law firm’s form bank—demands that Zazzle “cease and desist your unlawful use of the PI trademark or any confusingly similar trademark in association with … your products …” It’s not otherwise specific, leaving it up to Zazzle to determine what “products” are, in fact, “unlawful.” Mr. Millet also demanded an accounting, inventory count and some other information, upon receipt of which, “we will contact you to discuss a settlement in this matter.” He sure sounds confident, doesn’t he?

* It also includes this gem: “State and federal law supports our position that confusingly similar trademarks may cause confusion among customers.” Well, yes, confusing things might cause confusion. No one could deny that.

What is that amazing trademark registration? U.S. Trademark Registration No. 4473631, which is stylized pi symbol followed by a period, when used in connection with “athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms.”

Zazzle was pretty scared by the letter. Rather than ask Mr. Millet to be more specific about what “products” needed to be removed, it came to the conclusion that T-shirts bearing π were likely “unlawful,” and it removed those from its website, “while we evaluate the complaint.” This prompted some hard feelings from those designers whose products were removed.. About two days later, Zazzle reversed itself.

How to Label a T-Shirt

That’s nice, but … what the heck? You can “trademark” a T-shirt design? Can you “trademark” π? How did this come about?

You’ll be relieved to hear that the short answer is: not really. But then, you can’t “trademark” anything. Trademarks arise from use in commerce. That’s because the point of a trademark is to (1) distinguish your products from your competitors’, and (2) help consumers make that distinction.

With a T-shirt design, consumers are aware that the designs aren’t there to tell them about the quality of the T-shirt. An exception might be if the design is already a functioning mark, like T-shirt with Mickey Mouse on it, because that implies a relationship or sponsorship between Disney and the T-shirt seller. In that case, an already-functioning mark is also a design.

It’s thus tricky to use trademarks with clothing, especially T-shirts, but it’s not impossible. Consider a polo-style shirt with a polo player, alligator, OP, etc. over the left-breast area. It might be pretty, but consumers have also come to accept that’s where a label might go—a mark that really does say something about the quality of the fabric and/or the design. When you see such a mark, you that the shirt is itself of pretty good quality, and the design will be fashionable (even if you don’t know squat about fashion—you can count on the mark not to lead you astray).

Blowing it by the Examiner

That brings us to Mr. Millet’s client, Paul Ingrisano*, a New York area artist. According to the public record, he has been selling since 2009 t-shirts with a large “π.” over the left breast. In 2012, he filed (without a lawyer) a “use-based” application to register the “π.” mark for “athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms.” He had to submit a “specimen”—an example of how the mark was actually used in commerce. He submitted this—which doesn’t look like a real T-shirt.

* His in initials are “PI.” Get it?

Now, trademark registrations are wonderful things. They don’t make trademarks happen—only actual use in commerce can do that—but they are proof that the mark is valid mark that is actually being used in commerce. It might not sound like much, this is a big deal. Instead of having to prove—or get people to believe—that you’re actually using the mark in commerce, you can just show them the registration, which bears the imprimatur of the U.S. Government.*

* The other big advantage of a trademark registration is that it’s “notice to the world” of your trademark rights as of the application date. This means that those who started using a similar mark for similar products later than you can’t claim ignorance of your use, which allows you to push those competitors out when you start to enter their markets.

Because registrations are so powerful, the government employs examiners who, among other things, make sure that the trademark really is a valid mark that’s actually being used in commerce. And in Ingrisano’s case, the examiner initially rejected the application precisely because it looked more like a T-shirt design than a mark that says something important about the quality of the T-shirt.* “In this case, the submitted specimen shows the applied-for mark, π., appearing directly on the upper-center area of the front of the shirt, where ornamental elements appear. Furthermore, the mark is displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods.”

* But somehow the examiner missed the fact that the “specimen” was merely a drawing, not a real thing for sale in commerce.

The examiner helpfully suggested that Ingrisano submit a substitute specimen “that was in actual use in commerce at least as early as the filing date of the application … that shows the proper trademark use for the identified goods.”

Ingrisano took the examiner up on her suggestion. He submitted this specimen—which looks like an actual white T-shirt with a small “π.” over the left breast, exactly what the examiner suggested.

This might be a trick of the eye, or an artifact of file compression, but if you look closely to the symbol, the area around it looks pixilated in a pattern different from the surrounding area.

But you should banish all thoughts that Ingrisano photoshopped the symbol onto a picture of a normal white T-shirt. That’s because Ingrisano swears under oath that he has been this specimen is something he was actually offering for sale as of the filing date of the application.* And people never lie under oath. Ever. He was just foolish for using a different specimen the first time (which wasn’t actually a specimen), when he had this specimen laying around the whole time.

* Specifically, he swore, “The substitute …. specimen was in use in commerce at least as early as the filing date of the application.”

This satisfied the examiner. The application survived the “opposition period”*, and a registration issued in January of this year. A few months later, Mr. Millet wrote his demand letter to Zazzle, attaching the registration.

* This is a period of time when anyone who thinks they’d be harmed by the issuance of the registration may institute a lawsuit-like administrative proceeding to try to stop the issuance. But first, the opposer has be aware of the application.

Yes, But What Is the Mark Telling the Customer?

Ingrisano is not the first to try to game the system. What’s disappointing to me, personally, is the role the U.S. Patent and Trademark Office played in Ingrisano’s game. Registrations seem powerful to most, and without it, I doubt Zazzle is intimidated enough to comply (if only even briefly). The examiner didn’t question: (1) why Ingrisano didn’t use the substitute specimen in the first place—that he happened, by coincidence, to have just the T-shirt laying about; or (2) the odd pixelation around the symbol in the image of the substitute specimen. Maybe it’s just a trick of the eye, but, given the stakes, it was worth looking into, perhaps asking for a higher resolution image.

This all raises a more fundamental issue. Even if everything were above-board, can that “π.” ever really function as a trademark in this particular case? In the usual case, the upper-left-breast placement of a distinctive symbol conveys useful information to the consumer: the fabric is probably a good quality, the design is fashionable, etc. Here, all we have a plain T-shirt, probably purchased off-the-shelf, blank except for the symbol. What is the symbol saying about the T-shirt? Nothing that I can tell. If Ingrisano had a line of fashionable clothing with the “π.” symbol, that’d be one thing—then the message would be, “This was designed by someone who is cutting edge” or whatever—but the only product we have evidence of are the two blank T-shirts.*

*  What’s really weird is you can’t find any of these T-shirts for sale online anywhere. Maybe Ingrisano sells them from a store in New York?

At any rate, Zazzle made the right choice in restoring the pi-designs, both morally and legally (as I’ll explain). But you might be wondering: what about that registration? Didn’t I say it was “wonderful”? Isn’t Zazzle taking a huge risk?

I did say registrations are wonderful, and they are, but they can’t make a silk purse out of a sow’s ear. They make marks easier to enforce, they are proof of validity, and they give you all-important priority nationwide, but beyond that, they don’t add to the strength of the mark. A weak (but still valid) mark remains weak.

More important, a registration is not really a substitute for validity. It doesn’t “make” a trademark. It only confirms the validity of the trademark. That might well be what Ingrisano and his lawyer didn’t understand. I’ll bet they thought that, once Ingrisano got the registration, they was home free—that Ingrisano had “trademarked” π. Zazzle and anyone else who dared use π on a T-shirt were, henceforth, his tenants, and he was the landlord of π.

Not so. The registration is evidence of validity, but it can be rebutted. If, for example, you haven’t really been using the symbol in interstate commerce, that the specimen you submitted to the examiner isn’t really something you ever had for sale—then you never really had a trademark to register in the first place. Upon such proof, the USPTO can and will cancel the registration.* More to the point, a court won’t find infringement, because you’ll lose on a key element of the claim. What’s more, the court can also, and will also, cancel the registration.

* The five-year incontestability status won’t help here, because two of the exceptions to incontestability—fraud and abandonment—are applicable here.

But Can He Blow it by a Federal Judge?

But let’s say that Ingrisano had some minor interstate sales of the white T-shirt.* Arguably, any sale in New York City is potentially an interstate sale (and he made the sale when he told the examiner he did). Zazzle would be in trouble then, right?

* There’s another issue that might give Ingrisano trouble. His registration is limited to athletic apparel, and beyond that, it doesn’t function as a registration. If T-shirts aren’t “athletic apparel,” he has to prove validity the hard way. People happen to wear T-shirts when working out, but I’m not sure if that makes them “athletic,” a term that make me think of something along the lines of a tennis shirt.

Well, no. Ingrisano would still need to prove that consumers are likely to confuse Zazzle’s T-shirts with his own. And he almost certainly cannot. Determining whether a likelihood of confusion exists requires the presentment of a lot facts. Jurisdictions differ in the precisely factors the courts must consider, but they all have these factors in common:

• Strength of the mark;
• Similarity of the marks;
• Similarity of the products;
• Nature of the consumers;
• Similarity of marketing channels;
• Actual confusion;
• Intent of the putative infringer.

Strength of mark means* both intrinsic strength and commercial strength. The intrinsic strength the mark is actually pretty good, since π has little to do with the quality of T-shirts. But commercial strength? He seems not to have sold very many. They’re not for sale on the internet, and no one seems to have heard of this brand before (no chatter about it on the internet).

* In all jurisdictions except the 6th (my own) and 11th.

Similarity of the marks. Not as strong as you’d think. Ingrisano’s registration is for a specific representation of π, which means he intentionally wasn’t claiming all representations of π. Also, the placement of the mark will matter in court. None of the accused T-shirts place π on the upper-left breast. Indeed, none is using π as a trademark at all but as a design. I strongly suspect the evidence will show that consumers can tell the difference between a T-shirt design and a brand.*

* Imagine if you were selling a T-Shirt with an alligator on it. Not he Izod-Lecoste alligator, but a significantly different one. Would Izod-Lecoste, as famous as it is, be able to prevent all depictions of alligators on T-shirts? Don’t be silly. I wouldn’t depict the precise Izod-Lecoste one, though—that’s strong mark.

Similarity of the products. The products are the same.

Nature of the consumers. This cuts both ways. On the one hand, people who shop for T-shirts probably aren’t too choosey, which implies that confusion is more likely (on the theory that careful shoppers will be more likely to notice the differences between the marks). On the other hand, they aren’t very likely to be influenced by branding, which cuts against the strength of the mark.

Marketing channels. Very different. The designers use Zazzle and other made-to-order, internet-based services to market and sell their products. It’s unknown what Ingrisano does, but it’s not that.

Actual confusion can be powerful evidence of infringement, but lack thereof doesn’t cut against a finding of likelihood of confusion, so this factor is neutral.

Intent. The alleged infringers were completely surprised at having their stuff taken down, so it’s safe to assume they had no intent to trade off of Ingrisano’s amazing goodwill. Lack of intent never weighs against a finding of likelihood of confusion, so this factor is neutral.

Now, you don’t tally these up like a scorecard, but you weigh them using common sense. I’m confident a jury would find that the weakness of the mark and the dissimilarity of the marks (and they they’re used) outweighs the similarity of the goods.

But that’s not all, because Ingrisano has a “standing” problem. If Ingrisano is selling his T-shirts out of a New York area shop, the Zazzle designers aren’t really competing in his market. It might be different if he sold T-shirts on the internet, but he doesn’t. Under something called (seriously) the “Dawn Donuts Doctrine,” even with a registration, you can’t enjoin use of the mark until you have concrete plans to move into the junior-user’s market.

Oh, speaking of junior users. If Ingrisano’s argument is that any use of π on a T-shirt is a trademark use, how certain is he that he’s the first to use π on a T-shirt? I think we nerds were wearing π on t-shirts in the 1980’s. I don’t think he can have it both ways.

Finally, what about defenses? One thing getting lost in all this is the right of free expression. In theory, the First Amendment isn’t a defense to trademark infringement. The right to free expression doesn’t include the right to confuse consumers into buying your product, but the law tolerates a certain amount of confusion where words (and, in this case, mathematical symbols) have a normal application other than as a mark. π means, in normal parlance, the ratio of a circle’s circumference to its diameter. Trademark law won’t permit Ingrisano to monopolize π displayed on T-shirts. Sometimes—by which I mean, in every single instance—π just means π, and not Paul Ingrisano.*

* I probably should have started with this defense, since it’s Zazzle’s best argument. That’s because it doesn’t matter how strong Ingrisano’s mark is, or even how strong the case for infringement is. As the Supreme Court explained, we will tolerate some confusion to protect expression.

But Who Minds the Gatekeepers Themselves?

Fortunately, Zazzle eventually saw through this cynical, legally toothless ploy, though only because those most affected by it—the designers whose commerce was interrupted—complained. But that’s not very comforting. I’m always happy to be paid to assist a client in defending against or asserting trademark rights, but in this case, it never should have gotten this far. Zazzle never should have had to even deal with this; its designer never should have had to complain. The USPTO never should have issued the registration, Mr. Millet should have known enough about trademark law to know he didn’t have a case, Mr. Ingrisano should have known this was all too good to be true.

OK, and maybe Zazzle should have known better, too. As with the SPACE MARINES case, it’s surprising that a company that deals on a daily basis with intellectual-property rights seems not to know very much about intellectual-property rights. If you make yourself a gatekeeper for goods and services, you owe it to your customers to also be a gatekeeper for intellectual-property claims.

Thanks for reading!

Rick Sanders

Rick is an intellectual-property litigator. He handles lawsuits, arbitrations, emergency injunctions and temporary restraining orders, opposition and cancellation proceedings, uniform dispute resolution proceedings (UDRPs), pre-litigation counseling, litigation avoidance, and other disputes, relating to copyrights, trademarks, trade secrets, domain names, technology and intellectual-property licenses, and various privacy rights. He has taught Copyright Law at Vanderbilt University Law School. He co-founded Aaron | Sanders with Tara Aaron-Stelluto in 2011.