I recently heard about a small apparel company that’s being sued by Ohio State University for trademark infringement, and the ensuing conversation on a forum I frequent left me scratching my head. It’s evident that a lot of people don’t understand infringement and what it entails.
What is trademark infringement?
Simply put, trademark infringement is using something in a manner in which you’re not authorized. One of the most common examples are items that feature a Disney character such as Mickey Mouse or Lightning McQueen. I see items with Disney characters listed on Etsy shops as well as when I’m at shows. None of these items are authorized, and Disney WILL pursue all legal means necessary to protect their trademarked characters.
This became a huge issue several years ago when Brother released its first Disney enabled embroidery machine. People began making and selling items with Disney characters, even though the manual for these machines very clearly states that the designs are for personal use only. There is absolutely no commercial license included, implied or explicitly stated for any of these designs, yet people were consistently selling them.
What happens when a trademark is infringed upon?
Usually, the offender gets an email, in the case of Etsy, or they get a letter from an attorney. This initial contact usually includes information on what you’re selling that is in violation of trademark laws, and how to correct it. In the example of the Etsy listing, the shop owner would receive an email from Etsy saying that the offending listing has been deactivated and the reason why. It will also state the name of the trademark owner.
If the offender removes the listing, and discontinues selling the item in question, that’s usually it. The real problem comes when the offender continues to sell the item, either by listing it differently, or by changing where it’s listed.
How do I avoid trademark infringement?
This is the really simple part in most cases. Don’t do it! Don’t use anything that’s recognizable as someone’s trademark, from Roll Tide! to Mickey Mouse to any sports team logos. Don’t make and sell stuff that includes those images. For other things that you’re not sure about, do a Google search. Find out if your idea has been trademarked in the past, and act accordingly. Either contact the person/company who holds the trademark and find out about licensing it, or skip it completely.
I ran into an issue recently where I made some shirts with a popular line from a movie. Like song titles, most movie lines aren’t trademarked, and using them cannot be considered infringement. However, this particular line has been trademarked by someone, and he enforces it stringently. Do I think he should be able to trademark a line from a movie? Nope. And from what I have read online, he may not be within his rights to a) own the trademark in the first place; b) enforce the trademark by claiming that ALL uses of it on a t-shirt are infringement, and c) block everyone else from ever using the phrase on items meant to be sold. But I don’t have the money, time or desire to pursue it. And that’s probably what most people expect will happen when they file a trademark application.
But I’m just a small business; will they really come after me?
OSU is suing a small company to whom they’ve twice sent cease & desist (C&D) letters. Disney sued a couple who dressed in costumes that looked similar to Tigger and Eeyore for kids’ parties. So, I guess the question is, Do you feel lucky? In each case I’ve been able to find on trademark infringement, a letter (or three or four) is issued with specific instructions – stop selling products with our logo, you can no longer dress in costumes that look like our characters for kids’ parties, etc. The couple in the Disney example made one mistake – Disney told them to send the costumes to Disney, and instead the couple said they returned the costumes to the Peruvian company for a refund. In response, Disney sued them for $1,000,000.
I’ve read a lot of opinions on this subject, most of them from people with small shops on Etsy, and I’m always amazed at how much they’re willing to risk by continuing to produce items featuring trademarks of various companies, sports teams and other entities. One person said that she would continue to produce her “Frozen” products until such time as Disney showed up at her door and pried them from her cold, dead hands. Wow!
How do these companies find out about my products?
There seems to be a misconception about how a company like Disney might find your products which infringe upon their trademarks. Several of the bloggers I’ve seen insist that “someone is turning us in, probably the competition.” They think a company the size of Disney wouldn’t possibly be able to find the infringement on their own.
I don’t know where these people live, but I think they’re deluded if they believe Disney doesn’t care. Disney has proven time and again that they definitely do care, and they will pursue legal action against anyone they perceive to be infringing their trademarks. I don’t know for certain, but based on the vigor with with Disney seems to pursue these cases, I wouldn’t be surprised to find out that they do indeed have a staff tasked with finding these products.
What it all means
What does all this mean? It means, don’t infringe on someone else’s intellectual property. Obtain and maintain licenses for trademarked logos, characters, etc. And be sure that you’re just being a good person – trademark infringement is stealing. Anyone can make a mistake like I did, and inadvertently infringe on a trademark, but it’s how you handle it going forward that determines the character of your company.