Overzealous Zazzler Zeeks TM advice

Dear Rich: I'm a Zazzle entrepreneur and like many others at Zazzle am often subject to overzealous abuse of erroneous trademark and copyright violation reports. From my understanding a registered trademark is a pretty specific thing (I could be wrong). So for example if you get a trademark for the words "First Kiss", the trademark would specify the font in which the words would be written, the colors if any other than black as well as whatever else you specify to make your trademark original and how it will be used. "First Kiss" is now your registered trademark...woohoo! Now for the questions: (1) You come across someone who uses the words "First Kiss" in a graffiti styled design with all sort of frills and embellishments and plasters it on a t-shirt, mug etc. Now although the words used are the same they are written in completely different style (font), it looks nothing like the trademarked words and would never be confused as having anything to do with the company/individual that registered the trademark....is that a trademark violation? (2) "First Kiss" are pretty common words and are used frequently. You come across someone who has used those words in a sentence and plastered in on a t-shirt, mug, etc. "Remembering our very first kiss" ...is that a trademark violation? You're starting with some incorrect information; we need to back up a few steps.

Square One Dept. A trademark registration for a name or text is usually not limited to a specific font; if that were the case, Nike, Gucci and Coca-Cola would have problems stopping ripoffs. Even if someone registers the word-mark in connection with a design, courts won't limit protection to the design. They will apply common sense to determine whether someone is trading off the mark unfairly and consumers are likely to be confused. So changing colors and fonts doesn't get you off the hook for infringement.

As for your questions ... Assuming someone registered FIRST KISS for t-shirts and cups, they would have priority over subsequent users on similar merchandise and could stop them regardless of the font. You claim that customers "would never be confused." If you can prove that in court, you might be able to get off the hook for infringement, but the The Dear Rich Staff believes that the chances of proving an identical word mark on identical goods does not infringe is little bit like Dr. Richard Kimble finding the one-armed killer.

Trademark fair use. Your second question is a little more complex and relies on interpreting the rules for trademark fair use which we discussed in a previous blog entry. As a general rule, descriptive use of terms is permissible. Again, common sense prevails here since a competitor's repetitive use of a descriptive term may be an  illegal attempt to siphon customers.