Trademarks - Okay To Use A Name If Trademarked In A Non-Clothing Etc Class?

[Artsiren]

Hi!  I'm working on a series of designs, and they use mottos or old tourism taglines for places. I've just come across one where I was considering using the place's motto.

Turns out it is trademarked in a non-related way in the USA and I wonder whether I'm fine to use it. They have the trademarked term in International Class 001 (Chemicals); and US Classes 001 (Chemicals), 005 (Pharmaceuticals), 006 (Metal Goods), 010 (Medical Apparatus), 026 (Fancy Goods), 046 (Currently Being Discontinued).

I'm guessing the answer would be to avoid it, just in case. But it would be interesting to hear other Zazzlers - and Zazzle's - take on things like this. Usual legal disclaimers apply, etc (I know most of you/us are not lawyers, attorneys, etc) and cannot be taken as legal advice!

Not sure if metal art prints count as 'Metal Goods' or not - or whether they fall under Class 16 (Paper Goods) as part of 'printed matter'.

Yeah, I'll probably just make up a tagline or just leave the motto in its original language (and avoid translating it anywhere in the metadata).

[JimCarnicelli]

Hey there. I wanted to let you know I've drafted a primer on trademarks for Zazzlers. It's partly in support of the new tools I've created for Zazzlers concerned about trademark infringement. Consider reading this article:

https://snugglehamster.com/article/what-are-trademarks

I'd want to look up your exact text before giving a solid answer. But given what you described, it should be fine for you to use it. Every trademark has a narrow context for usage. I came across an amusing example over the weekend of the clip by Mötley Crüe singing the refrain to their 1980s era song "Girls, Girls, Girls". Just because they have a trademark marked with "Girls, Girls, Girls" doesn't mean they have trademarked that phrase. In fact they only trademarked the sound of them singing the refrain. You should be able to use it in your Zazzle products. That's a good illustration of how narrow these can be. I encourage you to read my primer for more details.

I'll also tell you that I've just released my Trademark Search, available for free for Basic agencies, and Trademark Analysis, available to paid Premium agencies. The latter compares all of your products across all your stores with all 4 million active trademarks at once. Most of the textual matches do not represent trademark violations. But it's worth combing through them to see if there are any you should be concerned about. You can read more about that here:

https://snugglehamster.com/article/how-to-use-the-trademark-analysis-feature

[Artsiren]

Thanks Jim. In this case, the phrase was, 'Sweet Land'. I was going to use it in connection with an Aruba poster I was creating, since their anthem is 'Aruba Sweet Land'.

But then, to avoid any future problems, I found the island motto, 'One Happy Island' - but figured this has been used for years in connection with Aruba. I couldn't find anything making this one a trademark, but found an article in an advertising forum describing the history of the ads using the phrase (the ad agency said they used it for the tourism ads because the phrase had been around for years, so I guess it would have been okay to use. Certainly there are plenty of products on several POD sites that use it, though that's no guarantee it's not infringing!)

[Aside: I triggered a tripwire with an 'I Love New York' set of products here on Zazzle a few yrs ago, which Z had to delete. To this day, I'm actually not sure what *exactly* was infringing. I just assumed the local state government has New York set up as a trademark minefield, so these days I work on "The 49 States of America". I'd like to do some designs for NY but, I dunno. Obvs I knew abt the legendary "I (HEART) NY" logo, but figured using the word 'love' instead and 'New York' instead of 'NY' would have been fine. Altho, like all the other states, I did put little red hearts into the design - maybe it was those in combination that triggered it. < shruggs >]

Anyway, back to Aruba - I ended up lobotomizing any creativity or notions of creating something that stood out from the crowd, and just used Aruba with the tagline, 'Caribbean Sea' instead for the final product. A lot of people use map coordinates for these kinds of design, but I wanted to try and create something a little more memorable.

That'll teach me. Lol. Spent more time trawling USPTO databases and tourism and ad forums than I spent on the design itself!

[JimCarnicelli]

Thanks for a detailed response. I think you mostly have the right ideas here. But I suspect you are still more concerned than perhaps you should be. Again, I'm not a lawyer and I don't specialize in this topic. In my lay opinion most of what you want to do is perfectly fine. I did a little exploration of your examples. Here are some thoughts.

Here's a quick search in SHD for "sweet land":

It looks to me like you could use that phrase for just about anything you'd care to do in Zazzle. If Zazzle happens to start selling calcium carbonate as a lime substitute for farmers, maybe don't slap the name "Sweet Land" on it.

Same story for "happy island". In each case you may need to dig a little deeper. For example, that second one is actually a trademark of this graphic:

Not of the text "happy island". The same goes for the "I love NY" example. It's actually only a trademark of the familiar graphic:

Not of the words or variants. I would say your design probably looked too similar to this. Hence the takedown request. I'm curious though. Do you have a screenshot of what the design looked like? You can paste it here for discussion like I pasted the above trademarks for the same purpose.

One thing that bothers me is that anyone can claim that some product of yours violates a trademark. That doesn't mean it's actually true. Companies like Zazzle don't necessarily want to do the digging to challenge a claimant. I think they are likely to just assume a claim is true. While I'm no fan of the Communications Decency Act (CDA), I do really appreciate section 230, which limits the liability of companies like Zazzle which provide platforms to you and me. Section 230 does require Zazzle to provide a reasonable means to remove offending trademark and copyright violations. I do think that claimants should be expected to provide significant evidence of their claims though. Like citing specific trademark case numbers or references to supporting documentation online. I think Zazzle and other platforms should stand up a little more firmly to the bullying of sometimes overly aggressive brand management agencies.

[Artsiren]

Thanks for all of that info. Very helpful. Here's a small version of the New York design (from my 'Forbidden' Folder!) For discussion only (I've added a watermark to that effect - obvs it isn't in the actual design).

[JimCarnicelli]

Thank you for sharing. I kinda wonder if the claim had to do with your use of New York's state seal. I did a little digging and found that there is some controversy over whether you can use a government emblem like this for a commercial work like this. Although I would lean on "probably yes" as an answer, it's possible that there could be one of several bases for claiming this is a violation of some copyright or trademark. In any case, I could see some brand management company making such claims to Zazzle and of course Zazzle not really challenging them. Some food for thought. I do just wish Zazzle would tell you clearly what the problem is so you could adapt properly rather than live in fear. The discussion below on the topic is a good one:

https://law.stackexchange.com/questions/58474/can-i-use-the-governments-seals-and-logos-without-its-...

[Artsiren]

Thanks for that link Jim. Certainly there's no copyright problem, because of its age (I checked that back when I created it). My general game plan was that I wasn't creating anything purporting to impersonate a government body of any kind; and that what I created was not disrespectful of the seal, or the people or place in any way - like a rude parody type of thing.

I always had it in mind that government stuff (being publicly funded) was kind of 'open source' in any case, but I'm not sure that actually *is* always the case. Best to check individually for each one, which I tend to do.

I think I might have a go at New York in a different set of designs; pretty much the whole template is okay to use on that series - so if Zazzle auto-blocks it, then simply using the two words 'New' and 'York' in combination is the problem.

Aside: just pondering whether I might have screwed up with my tags for that original NY design. Can't remember what I used - it's conceivable the design is okay, but I accidentally tripped over a trademark in the tags. I have done that in the past with a st*r w*rs parody featuring a boxer dog brandishing a light sabre. Maybe 'light sabre' is trademarked - I knew I should have called it a 'hand-held laser on a stick' (lol). But actually, I think I might have stuck 'st*r w*rs parody' in the tags. Stupid mistake really.

[JimCarnicelli]

I think you're thinking about it all exactly right. Well thought out. And yeah. If only Zazzle would tell you what's wrong. Moreover, if only Zazzle would demand that claimants explain what the violation is specifically. I think they keep things vague on purpose just to scare you and scare Zazzle.

[Connie]

Theoretically, it's fine to use the word or phrase in a non-related class. But it depends on the company if they pursue it or not. Most likely you'd be OK to use it, since it's a totally unrelated trademark. It sounds like a medical company or pharmaceutical company.

[Artsiren]

Thanks Connie. I gave a little bit of context above, in reply to Jim. The live TM concerns, "calcium carbonate mud used as a lime substitute on pastures and crop lands to adjust soil ph level" - so probably not infringing. But as I mentioned above, I ended up going for a poster tagline a little more anodyne.

(PS don't know if that's the correct usage of 'anodyne' but I've always wanted to use that word. Lol. But I mean 'a little less likely to cause controversy!")

[JimCarnicelli]

See my reply to your reply. And yes. That's a completely valid usage of "anodyne".  😉