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 Chilling Effects Clearinghouse > Protest, Parody and Criticism Sites > Notices > No Strawberry Shortcake for Penny Arcade (NoticeID 632, http://chillingeffects.org/N/632) Printer-friendly version

No Strawberry Shortcake for Penny Arcade

April 22, 2003

 

Sender Information:
American Greetings Corporation
Sent by: [Private]
Legal Department
Cleveland, OH, 44144, US

Recipient Information:
[Private]
Penny Arcade (www.penny-arcade.com)
USA


Sent via: email
Re: RE: http://www.penny-arcade.com

TO: [Private]@penny-arcade.com
FROM: [Private], Corporate Counsel
American Greetings Corporation

DATE: Tuesday, April 22, 2003

RE: <http://www.penny-arcade.com>


Allow me to introduce myself. I am Corporate Counsel for American Greetings Corporation and its subsidiary companies. Your activity on the Internet was recently brought to my attention because you are engaging in trademark infringement, as well as trademark misuse and abuse.

Your unauthorized use of our STRAWBERRY SHORTCAKE, CUSTARD, and PLUM PUDDIN' trademarks is a violation of Federal Law. If you continue your unauthorized use, then your infringement is clearly willful, which may subject you to additional damages and attorney fees. At this point, I want to emphasize the seriousness of this situation.

Specifically, I am referring to your use of our STRAWBERRY SHORTCAKE, CUSTARD, and PLUM PUDDIN' marks on your website at:

STRAWBERRY SHORTCAKE and the related trademarks are federally registered trademarks of American Greetings Corporation and/or Those Characters From Cleveland, Inc., an American Greetings company.

This property is an extremely valuable asset, and we have invested substantial sums of money to protect and enforce our rights.

You must immediately stop using these marks in your website, and you must immediately stop using these marks in connection with inappropriate materials. American Greetings Corporation does NOT support the use of its marks in connection with any type of inappropriate material.

Please contact me immediately so that we can resolve this matter in a timely fashion.

Sincerely,

[Private]
Corporate Counsel
Intellectual Property and Litigation
American Greetings Corporation
Legal Department
[Private]
Cleveland, OH 44144
[Private]

This e-mail is sent by an attorney and may contain information that is privileged or confidential. If you are not the intended recipient, please delete this e-mail and any of its attachments and notify me immediately.

 
FAQ: Questions and Answers

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Question: What is trademark infringement?

Answer: Although different courts have different tests, the central concept is confusion in the marketplace. The law protects against consumer confusion by ensuring that the marks on the same or similar products or services are sufficiently different. A plaintiff in a trademark infringement case generally must prove 1) it possesses a valid mark; 2) that the defendant used the mark; 3) that the defendant used the mark in commerce, "in connection with the sale, offering for sale, distribution or advertising "of goods and services; and 4) that the defendant used the mark in a manner likely to confuse consumers.


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Question: What is Trademark Misuse?

Answer: Trademark Misuse is a theoretical concept which pertains to how a trademark holder handles its rights. It purports to be similar to the defenses brought in copyright and patent cases, which dictate that if the owner of the intellectual property rights (e.g. a patent or copyright) over-exerts its rights (e.g forces someone to buy an unrelated product to gain acess to the protected work), then the copyright or patent holder will lose its right to sue for infringement.

Recently, the theory was employed in challenging Network Solutions' dispute policy which held that registered trademark holders had the right to have Network Solutions immediately freeze any allegedly infringing domain names until the dispute was settled. It was argued that often claims with little or no support were being alleged by Registered Trademark Holders so as to prevent possibly infringing sites from materializing. Although the trademark holder's registration (and rights) were not cancelled, the argument that giving "extra" rights to registered trademark holders was unfair ultimately led to a change in Network Solution's dispute policy.

It is believed that the trademark misuse theory may still prove useful where a domain name owner is forced by a trademark owner to litigate or arbitrate a frivolous claim of infringement.


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Question: What exactly are the rights a trademark owner has?

Answer: In the US, trademark rights come from actual use of the mark to label one's services or products or they come from filing an application with the Patent and Trademark Office (PTO) that states an intention to use the mark in future commerce. In most foreign countries, trademarks are valid only upon registration.

There are two trademark rights: the right to use (or authorize use) and the right to register.

The person who establishes priority rights in a mark gains the exclusive right to use it to label or identify their goods or services, and to authorize others to do so. According to the Lanham Act, determining who has priority rights in a mark involves establishing who was the first to use it to identify his/her goods.

The PTO determines who has the right to register the mark. Someone who registers a trademark with the intent to use it gains "constructive use" when he/she begins using it, which entitles him/her to nationwide priority in the mark. However, if two users claim ownership of the same mark (or similar marks) at the same time, and neither has registered it, a court must decide who has the right to the mark. The court can issue an injunction (a ruling that requires other people to stop using the mark) or award damages if people other than the owner use the trademark (infringement).

Trademark owners do not acquire the exclusive ownership of words. They only obtain the right to use the mark in commerce and to prevent competitors in the same line of goods or services from using a confusingly similar mark. The same word can therefore be trademarked by different producers to label different kinds of goods. Examples are Delta Airlines and Delta Faucets.

Owners of famous marks have broader rights to use their marks than do owners of less-well-known marks. They can prevent uses of their marks by others on goods that do not even compete with the famous product.


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Question: Where can I find federal trademark law?

Answer: To be protected by federal trademark law, the marked goods and services must be used in interstate commerce. Federal trademark law is known as the Lanham Act. It protects marks that are registered with the United States Patent & Trademark Office as well as those that are in use but never registered.

Court opinions and United States Patent & Trademark Office (USPTO) regulations also interpret trademark rights and remedies. See the links to court sites provided by the Legal Information Insitute.


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Question: Where can I find federal trademark registrations?

Answer: The United States Patent & Trademark Office (USPTO) keeps the US federal registry of trademarks. It has an online search capability, TESS, which contains more than 3 million pending, registered and dead federal trademarks. This database may not be complete. One should check the News page to see how current the information actually is.

Be aware: not all trademarks are contained in the US federal register. There are state trademarks, unregistered (common law marks) and foreign marks as well. A mark does not have to be registered to be valid.


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