When Paul Ingrisano trademarked the mathematical symbol π (pi) with a period and then had his lawyer send cease and desist letters, there were a lot of immediate responses by news articles, blogs and comments from the public about it. About a week ago, when the online print on demand publisher, Zazzle (and possibly CafePress as well) decided to pull down products independently designed with the pi symbol, they were responding to this letter sent by Ingrisano’s attorney, Ronald Millet -
Zazzle Pi Trademark Letter
It says -
“Ingrisano’s federal registration of this trademark provides him with certain proprietary rights. This includes the right to restrict the use of the trademark, or a confusingly similar trademark, in association with confusingly similar products or services. The Lanham Act (the U.S. Trademark Act) also provides numerous remedies for trademark infringement and dilution, including, but not limited to, preliminary and permanent injunctive relief, money, damages, a defendant’s profits, provisions for the destruction or confiscation of infringing products and promotional materials, and where intentional infringement is shown (as would be the case here), attorneys’ fees and possible treble money damages.”
It goes on to say, not only that all pi related products must be pulled down but that an independent audit must be made and all accounting of any and all profits made from the sale of any and all pi design products, including those pre-dating Ingrisano’s claim along with the dates of each product being placed online containing the symbol or reference to pi. (paraphrased, see the actual letter above, or in this Wired article found here - http://www.wired.com/2014/05/pi-takedown/?utm_source=rss&utm_medium=rss&utm_campaign=this-guy-trademarked-the-symbol-for-pi-and-took-away-our-geeky-t-shirts)
In 2006, there was a case brought in Florida Federal court against 52 defendants using the words, sweet pea in their design by a person who had been issued a trademark with a simple script of the words, sweet pea followed by a period. Because there had been no letters sent demanding to “cease and desist” before making the court filing, the case was dismissed. The intention in that case was for each of the defendants to pay a $5,000 fee to the new owner of the trademark for the words, sweet pea followed by a period and the generic quality of that trademark is very similar to the one for pi followed by a period, in fact.
Here is the page describing the logos of the sweet peas that were taken to court and on the right side of the page is the logo trademark in question whose owner took them to court intending to take all profits made from sales plus damages – or a $5,000 settlement fee toward their possible obligation to the new trademark holder plus whatever else the court may have awarded if it had gone forward -
In January of 2006, attorney Alexander E. Barthet of Miami, Florida on behalf of his clothing company client Sweet Pea Limited, Inc. went to Federal District Court in Florida and filed a complaint claiming that 52 companies or individuals located throughout the United States were violating their trademark.
The clothing company’s lawsuit contends that using the commonly used words “Sweet Pea” in any form — not just their stylized version — on any article of clothing is in violation of their trademark rights and therefore they are entitled to millions of dollars in damages. Most of the defendants are creating original designs using the words “Sweet Pea” graphically on T-shirts and children’s clothing.
Notably missing from the list are any large defendants. All the companies being sued are one-person businesses. (etc.)
(found here - http://sourpeas.org/page7/page7.html)
Going back to the pi with a period trademarked by Ingrisano – his and his attorney’s intention is clearly stated in the letter they sent to Zazzle demanding them to account for every design sold with the pi used in the design, to account for any and all profits that may have resulted from those designs, to submit to (and ultimately pay for) an independent audit of those sales and profits, AND to be prepared to remit any and all of those profits to Ingrisano and his attorney along with possibly treble damages for having allowed the use of these designs, despite many of them having no relational meaning to his trademarked design.
That is the point. People are angry about this because it demands money and damages to be given to Ingrisano that he neither earned nor had any right to acquire. And, he and his attorney are using a trademark law intended for the protection of genuine, distinctive and original intellectual properties used as trademarks, in order to do it unfairly and without cause. They are claiming a loss of revenues and a dilution of his trademark, when in fact, that trademark is not an original, distinctive nor unique mark and neither is it in use in a manner that is distinctive, original, novel or unique. That is the problem. That goes to the heart of the real issue here.
It is easy enough to drop the subject now that Zazzle has re-instated independent designers’ and artists’ copyrighted designs to their online market platform, but the case isn’t actually over because inherent in the demands shown in the letter sent by Ingrisano’s attorney, Ronald Millet are the terms they had intended, and likely will continue to pursue against any and all uses of pi that they perceive may have profited. This is partly evidenced by another trademark filed by Ingrisano claiming the symbol I<3 which is commonly used around the internet and already found on a variety of products including apparel, tshirts, sportswear, sweatshirts and other things he has listed for it in the trademark application.
The pi symbol followed by a period trademark reference can be found here (as well as at the US Trademark database) -
People are angry about the symbol pi with a dot trademark because Ingrisano and his attorney, Millet are working to steal profits from small and micro business owners, independent artists and designers, as well as from online print on demand companies which they did not work for, did not create, did not work to get and did not have any right to take.
The process seems to be -
- Trademark the most generic, commonly used symbol or group of words.
- Set precedent by forcing all current and previous users of that symbol or group of words to “cease and desist” using them along with accounting for all uses and profits from all uses in order to remit them to the new trademark holder
- Take all previously made profits from sales and which resulted from promotions based upon that symbol or group of words, including those pre-dating the holders registration.
- Require an independent auditor to be given access to all internal and electronic sales data concerning those which ever held or currently held that symbol, and similar symbol, or that group of words and any similar group of words which could be confused to be that group of words.
- File court orders and cases to take all profits from any and all sales of any and all products which contained any part of that symbol, any with that symbol, any part of that trademark symbol group and any use of those words both in that group combination plus anything similar.
- Demand that the court award treble damages and attorneys’ fees, court costs, independent auditing costs, plus all sales amounts and profits made from those sales of products containing anything similar to that trademark even if that trademark doesn’t apply in that context.
At the time when Ingrisano filed the trademark on November 21, 2012, a trademark for pi had already been issued very recently to a cigar company for the symbol pi. That trademark was issued on October 9, 2012.
From the USPTO database -
To have many of the articles about this in one place, here is a list of blogs, news articles and more information links about the pi followed by a dot trademark, its influence and demands on Zazzle (and possibly CafePress) along with basic information about trademark laws affecting it -
This article describes the originality and distinctiveness requirement of international trademark law -
The 273 comments on this Canadian article are interesting -
The costs, fees and registration schedule from the USPTO for patents, copyrights and trademarks – the trademark registration fees are well down the page -
The Lanham Act (from wikipedia) – The US Trademark Law -
A trademark is a word, phrase, or logo that identifies the source of goods or services. Trademark law protects a business’ commercial identity or brand by discouraging other businesses from adopting a name or logo that is “confusingly similar” to an existing trademark. The goal is to allow consumers to easily identify the producers of goods and services and avoid confusion.
U.S. Trademark Law is mainly governed by the Lanham Act. “Common Law” trademark rights are acquired automatically when a business uses a name or logo in commerce, and are enforceable in state courts. Marks registered with the U.S. Patent and Trademark Office are given a higher degree of protection in federal courts than unregistered marks – both registered and unregistered trademarks are granted some degree of federal protection under the Lanham Act 43(a).
About the treble damages component of the Lanham Act that Ingrisano and his attorney, Ronald Millet are attempting to claim against Zazzle, CafePress and all other users of the pi symbol in any design -
This article has a number of interesting points on it as well -
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.
This excerpt from the article link above it goes on to describe some common symbols used as trademarks having been issued those registrations at some point.
Apparently the artist and his supporters in Brooklyn simply do not get why people are angry that Ingrisano and his attorney attempted to monopolize all uses of the symbol pi in any design, to steal all profits made from any sales of any design with pi on it and to receive treble damages for those uses on top of that.
A lot of valid points were made in the comments section of this cnet article about pi and trademarking common symbols -
Concerning the distinctiveness, originality and novelty of trademark symbols – as required in international law -
Which marks may be registered?
Under Argentine law, a mark can be registered as long as it has “distinctive capacity”. This concept has two components:
- the intrinsic capacity to identify, which refers to the sign’s ability to identify when considered in itself (originality); and
- the extrinsic capacity to identify, understood as the sign’s distinguishability from other existing signs (novelty).
Certain signs lack originality, including the following.