Sham Tags: An Anti-Competitive Strain On Commerce

Sham Tags: An Anti-Competitive Strain On Commerce

A common scheme to stifle competition on e-commerce websites like Amazon, eBay, Etsy and elsewhere is to claim catch words or a saying as a trademark. For instance, t-shirt designs typically use catch words or a saying emblazoned across the front.  For instance, “Suns Out Guns Out.” Regardless if the catch words or saying is intended to be humorous, political, sexual or unflattering comments, the end goal is to sell the t-shirt.  And witty catch words or a saying can go a long way to attracting customers, and ultimately leading to sales.

On e-commerce websites like Amazon, eBay and Etsy, it is common to see many different sellers advertise t-shirts and other apparel items with identical or similar catch words or sayings.  To stifle competition, some sellers attempt to trademark the catch word or saying even though the catch word or saying fails to function as a trademark.  Unfortunately, there’s a work-around that can provide unscrupulous sellers with a monopoly over particular catch words or a saying.  This type of anti-competitive behavior should be exposed and stopped.

What is a trademark?

To preface, there are catch words or sayings emblazoned across t-shirts and other apparel items that truly function as legitimate trademarks.  The key inquiry is whether the catch words or a saying identify the source of the t-shirt and distinguish t-shirts vendors who compete in the same space.  If so, catch words or a saying truly function as a trademark.

Most of the time they don’t, and instead are merely a decorative or ornamental design of the t-shirt.  Catchwords or slogans that are intended to be humorous or generate shock value are merely decorative or ornamental elements of the t-shirt.  A customer buys the t-shirts because of the catch words or saying itself, rather than the catch words or saying creating a distinct commercial impression of a particular brand of t-shirt. As mentioned above, there may be instances where the catch words or saying both identify the source while also being humorous, creating shock or another emotional response.  These are rare exceptions.  There are also other unrelated exceptions, such as “secondary source.”

Sham tags:   

Circling back to the anti-competitive behavior. Vendors seeking to stifle competition and gain a monopoly on e-commerce websites like Amazon, eBay and Etsy have used the trademark registration process to further this goal. Using the “Suns Out Guns Out” example, as a hypothetical there are a number of vendors selling t-shirts on Amazon, eBay and Etsy with the saying “Sun’s Out Guns Out” emblazoned across the front.  One forward thinking, but ethically challenged, vendor decides to file for a trademark registration application with the United States Patent and Trademark Office (USPTO) to register this particular saying. Four months later, the USPTO files an Office Action claiming that the catch words are ornamental or decorative features of the t-shirt.  The applicant reads further or hires a lawyer, and creates a tag with the words “Suns Out Guns Out” and hangs it from the t-shirt.  The applicant takes an image, submits the photo with the response to create the impression that the vendor is selling this t-shirt under the “Suns Out Gun Out” brand.

In many instances, the USPTO trademark examiner takes the image at face value without peeking behind the curtain to see if the applicant is truly selling these t-shirts under the brand “Suns Out Guns Out.”  The application passes the first hurdle, works its way through the application process, and several months later the vendor has the trademark registration in hand.

The vendor then proceeds to submit the trademark registration certificate to Amazon, eBay or Etsy along with links to competitors selling t-shirts with the same “Suns Out Guns Out” saying. Amazon, eBay or Etsy then proceeds to disable the links and the seller’s privileges to sell on the respective e-commerce platform is now at risk.  These websites are not in the business of deciding trademark and other intellectual property disputes.  Customers are now limited to purchase from this single seller, who can now jack up prices as a benefit of having stifled his or her competition.

It should be note that not all vendors who receive trademark registrations under these circumstances are deliberately engaging in anti-competitive behavior.  Some are ignorant and don’t understand what a trademark actually is.  Regardless, the outcome is the same, and if contested, the vendor is likely to have his or her application successfully opposed or trademark registration cancelled.

Why is it a “Sham”

These tags are a sham because one only needs to peak his or her head behind the curtain and see that these vendors are not actually selling these t-shirts with the tags.  Or that “Suns Out Guns Out” fails to truly function as a brand – a source identifier that distinguishes one product from another.  I’ve often seen a vendor selling a t-shirt under the vendor’s true brand (e.g. “Purple Horizon T-Shirts) while selling the t-shirts with the catch phrases or slogans that the vendor owns trademark registrations to.

What can you do?

As mentioned above, e-commerce websites like Amazon, eBay and Etsy are not in the business of deciding trademark disputes. The e-commerce websites see that the complaining vendor has a trademark registration, and give absolute deference to the owner of what appears to be a legitimate trademark registration.

Unfortunately, the options appear limited to bringing an opposition (if lucky enough to catch during the 30-day publication period) or cancellation proceeding before the Trademark Trial and Appeal Board.  Alternative, another potential option is to bring a federal claim for a declaratory judgment that “Suns Out Guns Out” is not functioning as a trademark and order that the USPTO cancel the mark.  Neither option is cheap.

If you have experienced this type (or similar) of anti-competitive conduct on e-commerce sites like Amazon, eBay and Etsy, or receive a cease and desist letter, contact Paul Ticen to review your case and discuss your options.