The Gearhead Brand is Under Attack!

Well, as we're all NAL, it's all conjecture, I guess, but again, all evidence suggests it simply doesn't work that way. Again, using Apple as a convenient example, there's no question that both Apple records and Apple Computers have printed T Shirts. And the fact that "apple" is a commonly used word has everything to do with it. Back to your Xerox example, the very core (apple, ha!) of the argument was that Xerox had become such a commonly used word that they could no longer claim exclusive use of it, and that was in regard to actually making copies! The fact that it was even litigated, and extensively so, makes the point better than I can. Even a proper name that has no other meaning was argued to have come into such common usage that even the trademark could be called into question.

I understand what you're saying, but "best practice" and the law are not the same thing. A lawyer will advise you to do everything to an extreme to avoid litigation cost to defend a mark. If you make it iron clad enough it won't have to go to court. That doesn't mean that you have to take those measures to have a legal right.

Gearhead is as good an example as any. Here is a T Shirt from the company in question.

Super. They can make that. No one can say they can't. If someone does say they can't, they can produce a trademark registration that says otherwise. (And even that registration could be proven to mean very little) Good for them. However, take a look at this:

And this:

And this:

And many, many others. No, they are not all in violation of a trademark. I can't register "blue" tomorrow and start winning violation suites against anyone who uses the word. I can register the word, sure. But I can't stop anyone else from using it. If I registered it as a new brand of motor oil, I probably could stop you from making motor oil called "Blue", especially if your logo was similar to mine. But that's about it.

I don't have a ton of experience with this, but I was involved in starting a website that did, indeed, use a common word. We tracked down the people who owned the URL, but weren't able to buy it. But we were absolutely able to trademark and use the word. We absolutely can not start suing anyone else who ever uses the word. If we wanted something we could defend as unique, we should have gone with a proper name, or a unique name instead of a common word.

The Gearhead Records clothing mark gives them the right to make clothing with that word. It protects them if Ian comes along and tries to sue them. It does not give them exclusive rights, in any category, to a word that has been in common usage for decades.

I really feel like I'm not saying it right. Let me try this. Go back to the actual protection of a trademark. A trademark gives you protection from mis-identification. If I started printing a magazine called "Grass Roots Motors Ports", and it was all about cars, plants, electronics, and sometimes boats, I would get sued. The suit would be for trademark violation. I would lose, because I would have created confusion. People would legitimately have a very hard time telling my magazine from another popular magazine.

That's what trademark protection is all about. And having a mark registered isn't a "get out of jail free" card. Ian got trademark protection the day he sold a shirt. The more he sold, the more trademark protection he built. That's how it works, and that's how it has to work. Otherwise, if anyone wanted to start a new business they'd have to use gibberish words. And sometimes they do. But like so many things in the law, it's almost all gray area with very little black and white. And that's what this record company is getting wrong. They think they have some right they simply do not have. There is absolutely NO commonly held belief that "Gearhead" typically means a tiny-ass record company in California. Using that word in another context doesn't confuse anyone. No rights violated.

...And they really can't argue that Ian is making t shirts that anyone could mistake for Gearhead Records t shirts. That's what their mark gives them protection from.

So when you're starting a new company, you avoid using a mark that someone else already has a lot of equity in. It weakens your trademark and has the potential to confuse people. Tide is well known for making laundry detergent. But that doesn't mean I can't start a company or create a product called Tide. If I'm making laundry detergent, I'm probably smart not to. BUT - even if I call it Coast, but it's laundry detergent and has an orange and red swirl logo, I'm probably not going to do well in a copyright suit, even though I didn't use the word they have a copyright for.

Oh, thank GOD for everyone - here is all of that written by someone who actually IS a lawyer. And his, you know, actually makes sense and stuff.

http://lahserpatent.com/trademark-common-law-rights-business-name/

I think I see the confusion here. I'm not trying to be an ass or worse yet, win an internet argument, but I want to make my case, and seeing as IANAL, I suck at doing that.

Apple Computer was allowed to print Apple Computer T-shirts. Apple Corps was allowed to print Apple Corps T-shirts. Had there been a company called Apple that printed T-shirts, as long as they owned the Apple trademark for use in clothing/apparel, they would be allowed to print T-shirts under the company name Apple. But neither Apple Computer nor Apple Corps could start a business selling T-shirts and call it Apple. They owned different trademarks (computers, music).

Gearhead T-shirts does not own the trademark "Gearhead" for use in the clothing/apparel business. Thus, if you agree with my logic above, they're hosed.

You got about three posts in while I was typing. I'll come back to this tomorrow.

In reply to peter:

I'm not trying to be an ass either, and I'm not trying to make a case at all, just explaining what I do know. And I certainly am not claiming to know everything. I just know it doesn't work the way you're making it out. Trademark registration wasn't created by the government to berkeley with people. Trademarks are created by businesses. The formal registration process is simply to help make things more clear. You can at least search marks that are registered, so you can make an effort to avoid something already in use. They don't offer some kind of arbitrary power to shutter another business or make them change their name. To do that you have to show that the potential exists for your mark and their mark to be confused. The categories don't exist to grant exclusive use of anything. It's just to help identify how a company uses their trademark - a trademark that may well have existed before they registered it.

And that's why the use of a common word is important. There may be a thousand businesses with trademarks for "Gearhead". They may or may not appear in a list that the government keeps. And registering the word doesn't give you a lot of rights that someone who didn't register the word doesn't have. It's not a "gotcha" registration. It's intended to help provide a clear landscape for consumers. It keeps me from making fake Nike shoes and Rolex watches.

Think of it like this. If it worked the way you're painting it, what's to prevent me from making "Relox" watches that look exactly like "Rolex" watches. And if it worked the way you're painting it, I could simply register "Relox" and there's nothing "Rolex" could do about it. "Ah, sorry, Ed registered Relox in 'watches and jewelry'. Looks like you're hosed, Mr. Rolex." But it doesn't work that way. Rolex would sue me and win, based on their trademark "Rolex" even though I didn't use that word. They would show that there was potential for my mark to confuse consumers. Trademarks aren't a list of words. They're much more tricky than that.

There's nothing on a "Save the Stick" T Shirt that could lead anyone to believe that the "Gearhead" that produced it is the tiny record company. It doesn't make any sense. And Ian's company isn't "Gearhead". It's "Gearhead Shirts". That does make a difference because it helps avoid any confusion.

And Ian DOES have a trademark. Look at the link above. He has a common law trademark that does indeed give him rights. You don't have to have the mark registered for it to exist. The link again to make it easier:

http://lahserpatent.com/trademark-common-law-rights-business-name/

Damn-it. One more quick note then I'm off. At least for tonight.

Just to be clear, Ian may well be hosed. I don't know. But I do know it's not as simple as looking it up on a web site and seeing that someone else registered a name in a category. A judge might well decided that the record company is being somehow violated, but the case would be a lot more than looking up the registration and calling it a day. The fact that you can google "gearhead shirts" and get a LOT more hits for Ian's products than theirs, and the fact that his facebook page had more "likes" than theirs could suggest that his trademark is stronger than theirs, registered or not, at least when it comes to printing car-related t-shirts. Him being singled out among a ton of facebook pages with the word "gearhead" in the name might also suggest that they knew about his company and were specifically targeting him, and a mark they were aware of, when they registered the mark in "clothing". I'm pretty sure that would make that registration virtually worthless.

Ian has put an update on his FB page, BTW. Looks like it's settled, the real lawyers have spoken so internet lawyers can stand down

Ian said: Alright peoples.. time for an update. I finally talked to my lawyer today and the bottom line is that, even though Gearhead Records (GR) probably shouldn't have been granted it in the first place, they did sneak the right to own the "wordmark" of gearhead in to the trademark for their logo. So, effectively, they do own the sole right to print that name on to clothing. Now... in a sane legal world this would have warranted GR contacting me through our site, my email, snail mail or any other of the numerous available channels to inform me I could no longer print "their" name on shirts and stickers. I would have been angry but.. I would have caved and come to the solution I am about to present. Instead they took it upon themselves to take advantage of lax policies at facebook and get our page removed in a feeble attempt to extort licensing fees from me. They must have done this before to know it would work.. and beware other "gearhead"s... they will strike again. So, what to do? Well I think at this point the best solution is one that gets me right back to where I left off and leaves them with what they had to begin with.. NOTHING. So may I present to you, the new home of YOUR gearhead page on facebook.. right here. Effective immediately I will be changing the name of this page to gearheadshirts.com. As of tomorrow I will have registered that name under my Colorado LLC and will change the logo to read "gearheadshirts" in the spot where it now says.. the offending term. Gonna be a tight squeeze but I refuse to lose the brand recognition. I will then attempt my own trademark of my logo with that name. This way the only people who could possibly infringe upon it would be people who are actively trying to steal my business.. and not just people using a common term for a person who is in to cars or gear or what have you. As for Gearhead Records. I plan on never speaking to them again.. for any reason.. if I can help it. With the business model they have in place to leech small businesses out of licensing fees, I'd say they won't be around much longer anyhow. When they fail to extort anyone worth extorting, they will try themselves to make a gearhead brand beyond just band clothing. At that point we will make sure you, our amazing fans, know what they are up to.. and I'm sure you'll take care of letting the rest of the world know of their unscrupulous past. Thanks again for all of your support over the last couple of days.. you are all freaking awesome. Now.. we came here to do two things.. make kick-ass car shirts and chew bubble gum... and we're all out of gum.

NO! NO! I'm not finished!

Er. Guess I am.

BullE36 M3 like this is why I think copyright and trademark are bad ideas. It's nothing more or less than legal extortion.

Zomby Woof wrote: BullE36 M3 like this is why I think copyright and trademark are bad ideas. It's nothing more or less than legal extortion.

If this is the sort of dickery that can be done with copyright and trademark laws, imagine what evildoers would have license to do without them. Such as an unlimited right to counterfeit performance parts (at least those not protected by patents, if you propose keeping them around - a lot of the ones out there don't have patent protection).

Sure, people could avoid those by buying from reputable vendors... but this Shiny Happy Company Inc could get around that by printing up fake Summit catalogs with their own phone number and sending them to everyone they think might subscribe to Summit's catalogs.

So end result is Ian didn't do his homework, infringed on an existing trademark, built a brand around it, and is now passing it off as them being the bad guys? Why is he getting a TM for Gearheadshirts? Clearly he feels defending your TM is a Dick/bogus move borderline on extortion so why would he put the mechanism in place to have to defend Gearheadshirts Identity agains someone else in the automotive clothing field using Gearhead in their name? His tone in his email just strikes me as the wrong one for someone building a brand to take. It's quite unprofessional IMHO.

Edit removed confusion with another shirt provider..

MadScientistMatt wrote:

Zomby Woof wrote: BullE36 M3 like this is why I think copyright and trademark are bad ideas. It's nothing more or less than legal extortion.

If this is the sort of dickery that can be done with copyright and trademark laws, imagine what evildoers would have license to do without them. Such as an unlimited right to counterfeit performance parts (at least those not protected by patents, if you propose keeping them around - a lot of the ones out there don't have patent protection). Sure, people could avoid those by buying from reputable vendors... but this Shiny Happy Company Inc could get around that by printing up fake Summit catalogs with their own phone number and sending them to everyone they think might subscribe to Summit's catalogs.

It doesn't stop the people that want to do it now. If you really think about it, and truly understand how business works, it wouldn't be like that at all. Big business is set up to make money (and lot's of it) based on the rules of the game. It would only change the business model, and eliminate a lot of bullE36 M3 like this.

Yes I would, but you wouldn't be able to. It's not that simple. The thousands, and thousands of counterfeit manufacturers from Asia haven't found a way to do it yet. Why do you think you could?

To those who say I didn't do my homework... Of course I knew there were tons of other companies named gearhead but none were making shirts featuring vintage Japanese cars. I didn't know that someone could own the right to print a common word on a t-shirt and I didn't even think to look it up. So you're absolutely right.. I failed to do my homework. But I did plenty of other homework for my business.

I studied each generation of the Subaru brat and polled our fans to find just the right one for our shirt.

I concluded that the only good way to make all of the owners happy when making a starion/conquest shirt would be to leave off the brand emblems.

I researched what jet Saab was manufacturing to match the time period of the 99 I used.

I searched through old Datsun ads and found an amazing type style to replicate for a 510 shirt

In short.. I've done the homework that mattered to my customers. I just wish that was worth something in the world of trademark law.

Also... Nocones... I meant that I would trademark grpearheadshirts as one whole word.. Which it turns out also isn't possible.. My goal being to have a name that is specific to only me and if someone did infringe upon it then they would be actively trying to steal my business by pretending to be me... Not just some poor shmuck who didn't do his homework when he used a common term to name his company.

Now that you mention it though trademarking is like modern day claim jumping and I want no part of it.. I'd rather make my living creating and selling things people want than trying to extort "licensing" fees from people using a similar business name to my own.

Anybody else notice that gearhead is now gearheart? Sad that the world forces those kind of shenanigans...

In any case, I dig this shirt so I bought one...maybe it's the first part of my FC collection?

http://gearheartshirts.com/products/1719824-willys-jeep-fc150-shirt

Bryce

Gearhead(S) doesnt sound as cool. Id rather fight to sell more stuff than fight against a stupid system.