Pi is Irrational … So is this Trademark Dispute

Jez Kemp’s blog states that he makes “cool T-shirt designs.” It also details a peculiar trademark dispute surrounding the mathematical symbol “pi,” the online retailer Zazzle and a guy from Brooklyn. Check out Jez’s posts here, here and here. Here’s how the first one starts:

“I received an interesting email from Zazzle overnight.

Zazzle are a print-on-demand website where you can upload your designs and sell T-shirts, mugs, phone cases, you name it, with your design on.

The email informed me that:

the mathematical symbol “pi” is a registered trademark, U.S. Registration No. 4473631.

and that:

we will be removing all products in your store with the mathematical symbol “pi” as it relates to the goods registered for this trademark.

I’m still pinching myself trying to confirm this is real and not some twisted dream.“

I looked up the registration. It’s real (the specimen of use I’m not so certain of).

Jez wasn’t the only one who had his products and designs removed from Zazzle. Apparently all designers with apparel bearing the pi symbol had their products taken down. Angry designers took to Zazzle Forum boards, social media and blogs to voice their concerns. Many threatened to file counter-notices. Eventually, Zazzle relented and reinstated the pi products.

As for the guy behind the pi … here, again, Jez does the legwork:

“While the email mentioned a company called “Pi Productions Corp.”, the trademark listing above shows the owner to be a guy called Paul Ingrisano, whose LinkedIn shows he is “Owner at Pi apparels”.

Searching for “Pi apparels” doesn’t reveal very much, but searching for Paul Ingrisano does – he has this profile on Facebook, which has a pi-related cover image and shows he works at “Pi Production” who have this Facebook page here. Interestingly there is no website link and no links to any apparel, with or without the pi logo.”

It is interesting (though not surprising) that there is little, if any, actual use of his registered Pi mark given that it issued earlier this year (January 2014). A review of the prosecution history for Paul Ingrisano’s trademark application raises questions.

One question designers raised was how could someone own a trademark to a generic mathematical symbol … or, more often than not, they put it in the affirmative: the pi symbol cannot be a trademark.

The notion that the pi symbol (or any universal symbol) cannot be a trademark is wrong. It can be (even on its own without other word or design elements). The U.S. Trademark Office (USPTO) devotes an entire section of its manual for examining procedure to “Universal Symbols in Marks.” See TMEP Section 1202.17 et al. Here are examples of registered universal symbols:

• The @ symbol is registered for “batteries” and “television receivers” and other goods/services.

• The number “3” is registered for “wine” and “advertising services” and other goods/services.

• And there are prior registrations for pi symbol marks, such as this registration for “cigars”.

The concern, really, isn’t whether the pi symbol is registrable as a trademark (it is) – the concern is how do online service providers, like Zazzle, respond to takedown requests on weak or overreaching trademark claims.

Jez hits the nail on the head:

“… sites like Zazzle are so terrified of lawsuits, they often automate their content review process … This means real human judgement is reduced to a bare minimum. And with an army of frauds like Ingrisano firing constant claims, it was a matter of time before a company made a poor judgement out of fear …”

It’s hard to automate the nuances of trademark infringement analysis.

Not all trademark registrations should be treated equally. Sure, they’re entitled to certain “presumptions” but some registered marks are weaker than others and deserve only a narrow scope of protection. There are online service providers that don’t even seem to consider prior common law rights in evaluating claims. Or, as shown here, mere ornamental uses.

But that’s what counter-notices are for … if you can figure out your rights on your own or afford an attorney to do it for you.

To be fair, Zazzle has to respond to takedown notices and meet specific requirements in order to limit its liability or invoke a safe harbor. However, its drastic injunctive response to this pi trademark dispute was consistent with an actionable Digital Millennium Copyright Act (DMCA) request and the DMCA was not designed to remedy trademark infringement.

Zazzle’s “user agreement” (as is the case with many online service providers) does request trademark infringement notifications be submitted via its copyright agent. It’s not clear whether Mr. Ingrisano’s claims with Zazzle were filed as DMCA takedowns but his attorney clearly conflates copyright and trademark in his cease and desist letter. Using a DMCA notice to address a trademark violation can be a dicey move, especially in the state of California. See CrossFit, Inc. v. Alvies, No. 13–3771, 2014 WL 251760 (N.D. Cal. Jan. 22, 2014).

In the last of his posts linked above, Jez sounds the alarm:

“I’m not convinced a review was going to happen, or that reinstatement was inevitable. Zazzle just simply don’t want hassle. If they’re threatened by a DCMA and think it’s remotely credible, they’ll pull down all designs in order to avoid a lawsuit. If designers and store keepers make a big noise and threaten legal action in response, they’ll review it to avoid a potential lawsuit and a bad reputation. …

Without blog posts like that, as part of a wider uproar, Zazzle may have just sat on the decision and allowed the trademark claim to stand, which would have set a worrying precedent for other sites to do the same.”

Follow @proofofuse© Roberto Ledesma