The Gazette article notes that Avanta and Advanta are “neological” names.  While it’s true that coined or fanciful marks can be good choices for trademarks, both of these appear to be closely derivative of the word ‘advantage’.  Chances are if you’ve thought of a form of ‘advantage’, so has someone else, which increases the chances that your new brand may be infringing a prior trademark use. Originally published June 19, 2009.

Update: unfortunately, Advanta’s efforts to protect its brand couldn’t prevent it from going on the FDIC’s failed bank list.

Shepard Fairey’s company, Obey Giant Art, has sent a cease and desist letter to Pittsburgh graphic designer Larkin Werner asserting that the use of OBEY in connection with Werner’s Steeler Baby and Steeler Baby Kewpie Doll merchandise is trademark infringement.  Fairey has received criticism for this, mostly accusations of hypocrisy because he had to stop using “Andre the Giant Has a Posse” after getting legal threats from the wrestling association that owned the rights to that name, not to mention his Obama poster dispute with the Associated Press.  Fairey has also been attacked for his liberal use of artwork and graphic design without attribution.  However, what interests me is the assertion by Fairey’s business partner that all they’re trying to do is protect their trademark.  And someone else in Fairey’s company claims that “[a]nything with ‘Obey’ on it they can’t have.”  So, is this true?  Is Fairey obligated to go after all uses of the word “Obey” in connection with merchandise?

The short answer is “no.”  Shepard Fairey has a federally registered trademark for the word word OBEY in connection with stickers, poster, handbags, wallets and clothing.  This federally registered trademark gives Obey Giant Art the ability to go after infringers of its mark nationally.  And a tenet of trademark law is that the trademark owner has to take reasonable steps to police its mark.  If the use of the mark by others spreads, then the function of the trademark, which is to indicate the source of the product, diminishes.   However, owning a trademark that includes a particular word does not confer an exclusive right to that word for all commercial uses.

A court will find infringement if the use of a trademark is likely to cause confusion among consumers about the source of the goods. In other words, are buyers visiting cafepress.com likely to think that the Obey Steeler Baby merchandise is made by Shepard Fairey?  My first impression is that no, most buyers of the Steeler Baby merchandise believe that it comes from a Steelers fan and probably haven’t even heard of Shepard Fairey or his Obey clothing line.  Courts fortunately engage in a more rigorous analysis than this and apply a multi-factor likelihood of confusion test to find infringing use of a mark.  The factors vary depending on which circuit the case is heard.  In the Ninth Circuit (which includes the western states), the test is the Sleekcraft eight factor test and no one factor is conclusive of infringement.  The factors include:

1. The strength of the mark: an arbitrary mark such as Apple for computers or a fanciful mark like Adidas for shoes will get the strongest protection, but a suggestive mark such as Gleem for toothpaste won’t get as much protection, and a descriptive mark like International Business Machines for computers will get even less.
2. Proximity of goods: the more similar the goods, the more likely consumers will be confused about the origin of the goods.
3. Similarity of the marks: if the mark looks, sounds or means the same thing, the similarity could confuse consumers.  However, the context of the marks can be taken into account here.
4. Evidence of actual confusion: proving actual confusion can be difficult, but it can be persuasive.  This factor is not dispositive, however.
5. Marketing channels: if the goods are sold in the same store, or advertised in the same publications, the public is more likely to be confused.
6. Purchaser care: if a good is expensive, then purchasers will take greater care and research the product more before buying and will probably be less likely to be confused.
7. Intent: if the alleged infringer purposely used the mark to take advantage of the trademark owner’s goodwill, then that is pretty strong evidence that the purpose of the mark was to deceive customers.
8. Likelihood of expansion: if there is a strong possibility that either party will expand its business to compete with the other, than that supports a case for infringement.

It looks like Fairey considered only one factor of the likelihood of confusion test by stating that any product with OBEY is off limits, and has ignored the context of the Steeler Baby products, which concerns fan interest in the Pittsburgh Steelers.   The overall impression of Steeler Baby, including using the Kewpie Doll, the typeface and the color scheme, creates distinctiveness separate from Obey Giant Art merchandise.  And as far as I know, Obey Giant Art doesn’t make dolls.  The marketing channels aren’t similar either.  Steeler Baby is sold on cafepress.com, which is a website where individuals can produce and sell small batches of merchandise, but Obey clothing is sold on the company’s own website and in retail outlets.  Also, it doesn’t seem that likely that Fairey is going to enter the sports fan merchandise market.

Werner says that he didn’t intend to use Fairey’s trademark, but as a graphic designer he must have known about the famous-among-designers Fairey and his Obey designs and products.  The goods in dispute here aren’t expensive and buyers probably won’t put a lot of effort in researching this kind of purchase.  But overall, the case is not clear cut in favor of infringement and Werner would have strong arguments to support his case if he were to challenge Obey Giant Art.

Interestingly, if you go to cafepress.com you won’t find Steeler Baby anymore, but you will find products with the word Obey that appear to be more similar to the Fairey trademark than the Steeler Baby use.  A lot of the products are political and perhaps Obey Giant Art felt that trying to shut down political expression was going too far.  But there is plenty of merchandise that isn’t political and you can see why the company may be concerned about the cumulative use of the mark by all of these small producers.  Fairey has put a lot of hard work into his Obey products and brand, and he deserves the right to protect them, but Fairey does not have the right to exclude the use of the word Obey in all circumstances.

In cases like this, where the chances of consumers being confused aren’t highly likely, the optics for Fairey aren’t great.   In many circumstances, people are sympathetic when they see someone acting opportunistically and trying to free-ride on the hard work of others, but I don’t think that’s the case here.   When your brand is built on a history of anti-authoritarianism and free-culture, the public relations hit doesn’t seem worth it.

Update: apparently Shepard Fairey heard about the takedown notice and rescinded it.  Steelerbaby is now back on cafepress.com.