-Martha Engel, Attorney
Up here in the North, we are big fans of the store that has it all – Target. In fact most Minnesotans will often joke that we cannot step foot in a Target store without spending at least $100 and walking out with items we never intended to purchase on the way into the store. Maybe their logo really has a hypnotic effect. At any rate, we love Target up here. But lately, they’ve had their share of scandals and negative publicity. First, a huge identity theft issue. Then massive layoffs. A “Trophy” t-shirt triggered some outcry, as did their recent decision on gender neutrality for in-store marketing. You’ve probably heard of at least one of these. But what about their IP issues when it comes to some graphic T’s in their apparel department?
A company in Boston, Sully’s, was quite surprised to see in Target’s Going Local collection (a collection aimed at local markets starting with Boston and Chicago – surprisingly not Target’s local fans in Minnesota) a green t-shirt with the same GREEN MONSTAH as it had been selling for almost a decade. Sully’s had even filed a trademark application for GREEN MONSTAH back in 2011 for a variety of apparel goods, but it was abandoned for failure to file a timely reply to an office action where the mark was refused over registrations for “Green Monster” owned by the Boston Red Sox.
Going the old fashioned “social media” route, they took out a full page ad in the Boston Herald to address the issue in a public letter to Target. But this wasn’t their first t-shirt design kerfuffle.
This came just months after a designer was “shocked, confused, and frustrated” when a t-shirt remarkably similar to her #MERICA flag t-shirt appeared on Target shelves.
At least in the latter situation, Target said it was made by a vendor and not in-house, which does not necessarily absolve them from liability.
As a seller, what can you do to protect yourself from these situations? Well, one way is to have the manufacturer or vendor indemnify you for any trademark or copyright infringement and/or to represent that their product does not infringe any trademarks or copyrights of any third party. That way the liability is off of you as the seller and onto the manufacturer who should have verified the design did not infringe or sought permission from the third party.
But as for someone selling graphic T’s, how can you protect yourself from what happened at Target? Trademark rights cannot be granted for a mark that is purely ornamental – that is, a slogan, design or work used in a manner that is not source identifying. None of the situations above appear to be source identifying uses that would amount to the establishment of trademark rights – they’re just ornamental t-shirt designs. For those situations, copyright protection for the imprinted image would be available.