A Word of Caution

In my efforts to create the “rear-ended” bumper sticker from my last post, I also created another design that I thought was a little more “globally acceptable.”

I uploaded the image to CafePress to create the stickers, and almost immediately the image was flagged as being a “possible violation of the Content Usage Policy.” This meant that I could not create any products using the design. There was no indication that it was merely ‘pending review’ by any further CafePress team members. I was directed to read the “CUPS” and change my image accordingly.

Here’s the image in question:

Brake Bumpersticker

I immediately wrote the company requesting further information on what possible copyright I could be infringing.

I received the following response:

With regard to your pending image, we have set the image to pending status due to the use of the term “caution” in your design. In accordance with our Intellectual Property Rights Policy, the owner of the “Caution” trademark, has notified us that the use of the word “Caution” in product titles, product descriptions and/or in products potentially infringes upon the “Caution!” trademark.

Although we are not in agreement with all of the contentions, we are not in a position to evaluate the merits of an infringement claim made against you by a third party. In order to best protect ourselves from risk, we must take all allegations of infringement seriously and take action in removing the content from our site.

Accordingly, images which utilize the “Caution!” trademark have been set to “pending status” which disables said content from being displayed in your shop or purchased by the public. You may review the content set to pending status by logging into your CafePress.com account and clicking on the “Media Basket” link. The content set to pending status will be highlighted red.

If you believe that you hold the rights to the content alleged to infringe the rights of the third party, we encourage you to contact the alleged rights holder directly for a resolution to this matter. Below please find the contact information for the party bringing this allegation of infringement to our attention.

Caution Brand Apparel
P.O. Box 4802
Covina Ca 91723
legal@cautionwear.com

We apologize for any inconvenience that our actions may cause you. Please let us know if we can be of further assistance.

Now I don’t know about you, but I have a problem with the idea that the word “Caution” can be trademarked. You’ll notice that I have no exclamation mark on my image. If you go to the Cautionwear website, which by the way leaves a LOT to be desired, you’ll see these examples of their logos:

Caution 1

Caution 2

I’m not an expert, but I don’t see a similarity between their logo and mine. The only conclusion I can reach is that the WORD itself has now been trademarked. Here’s a screenshot of their site confirming this conclusion:

Caution Underwear page

If you haven’t already noticed, I’d like to point out the first product that is listed on this particular page:

Scratch and Sniff Underwear

So if you’re following along, you’ll see that the word “Caution” has been trademarked by a company that makes and sells “Scratch-and-Sniff Underwear.”

If anything ever needed a caution sticker, it would be scratch-and-sniff underwear.

So in the spirit of commercialism and profiteering, I’d like to offer the following list of words that I wish to declare my own registered trademarks:

  • Danger
  • Bigot
  • Gay
  • Sex
  • Ahead
  • Any
  • One
  • Notice
  • The
  • First
  • Four
  • Words
  • Made
  • A
  • Funny?

Make your checks payable to Paul Harris. I also accept Paypal.

Oh, and in the spirit of non-infringement, I altered the bumper sticker design. Get yours now at my CafePress store.

Brake Bumpersticker

32 thoughts on “A Word of Caution

  1. Crap. What else sounds good with Mist?

    Mist Erious
    Mist Conception
    Mist Understood
    Mist Aken
    Mist Opportunity

    Still working on it.

  2. jester…you can not trademark sex, because then i would have nothing to talk about. by the way…i was laughing by word 4, obviously i got it…lol..talk to ya soon..

  3. Uh, I already own the trademark to the word “gay”, and I have been meaning to talk to you about your frequency in using my word.
    By now you must owe me millions.

  4. Donald Trump tried to trademark “You’re Fired!”. I wish he had been successful. If my boss said, “Liz, you’re fired,” I would totally tell Trump about it.

    I worked with a straight, married man that had a rainbow car tag on the front of his car. It came from his church and said something like, “Camp Rainbow Bible School” in small print. I told him it cracked me up because, you know, that’s the gay pride symbol and all. The next day it was off his car. This prompted me to nickname him “Rainblow”. As in, “What’s going on, Rainblow?”

    He hated me.

  5. How do you trademark a word? Something to look into for the future.
    Jester, if you managed to trademark all those words, you’d be a millionaire in a couple of seconds, ha!

  6. I regret to inform you that you must immediately cease production of your revised bumper sticker as I am currently in possession of the trademark for “danger”. My lawyers will be in touch soon to discuss a settlement.

  7. I just went thru the same thing. I still don’t get how the hell “caution” is trademarked. Like you, my design was not even close to there’s. And if memory serves me Scratch and Sniff is a trademark and I don’t think they have the rights to that…

  8. I think Cafepress is actually being a bit too cautious in this case. Trademark is more than the word… it’s also the look and style. We’re all so scared of being sued! P’shaw!

  9. I just got hit with the same crap from CafePress over the same word “Caution.” I told them it’s not possible to copyright a common usage word all by itself. We’ll see what happens. You would think that the legal department at CP would have enough brain power to grasp the basics of copyright.

  10. I got the exact same form letter when I tried to upload a very generic Caution design to Cafepress.
    By the way, I’ve copyrighted and trademarked the letter Z.

  11. As have many other CPers, I also ran into this bull..
    to that effect I made a product with this description containing many capitalized trademarked words.
    “Trying to work in a business such as this, you hear many CAUTIONary tales about how common words and phrases have been trademarked, and can cause hours of work to be lost, or worse, if you use a trademarked term.

    Trademarks have their proper places and applications.. but single and double words used in every day language for generations is NOT one of them!

    Help the LITTLE GUY out!

    Protest TRADEMARK ABUSE.”

    See
    http://www.cafepress.com/trademarkabuse

    I haven’t sold any yet, but I don’t expect too.. designing it just made me feel better. 🙂

    Cheryl-CATs last blog post..1

  12. isn’t scratch n sniff a trademarked term?

    cafepress are wimps. even if caution co has a trademark they do not own the word, only their logo. c/p has overstepped their bounds of “pro-active” intervention, presumably because they don’t want to be “napsterized”.

    but now they run afowl of suppressing free speech and legal commerce, and empowering a bogus brand (they don’t even have an email address on their site! nor an order form..)

    even so, all they’d need is a proper forum for redress by any copyright holders to ensure swift retribution for any abuses. instead now they are the trademark bitch and should be slapped.

  13. HA! They did the exact same thing to me. That is how I stumbled on to your site. The website (cautionwear.com) has absolutely nothing on it. I believe it is a fake website, that’s what I googled “caution is a copyrighted term” because I spoke to several others who believe its not possible to copyright one single word.
    Not to rant, but I find it rather disturbing that a fake company thinks it has the rights over a very commonly used term. I hope the website plans on suing street signs and law enforcement.

    And for the record, my CafePress design just used the word (caution) no exclamation point. And as well, looked nothing like the so-called company’s copyrighted design. I asked CafePress for solid proof that there has been copyright infringement by asking for documentation.
    Yeah, I’m a little bit annoyed.

  14. i agree. big brother went way over outlawing the use of common words. this isn’t even a slogan like “no fear”. i received the same message for my surf sign design using the same word. how can anyone own a word?
    does this co. have the right to sue mcdonalds for their coffee cups
    with caution hot beverage on the side
    i believe the gov’t sector providing copyrights went over their skis on this
    i think this is f____king stupid or does someone have the right to that word to
    and i just committed a violation of word owners use!
    jellis7438@aol.com

  15. incidentally, caution.com isn’t even the same site anymore!

    “ROFL”

    Wrongful or groundless threats of infringement

    Various jurisdictions have laws which are designed to prevent trademark owners from making wrongful threats of trademark infringement action against other parties. These laws are intended to prevent large or powerful companies from intimidating or harassing smaller companies.

    Where one party makes a threat to sue another for trademark infringement, but does not have a genuine basis or intention to carry out that threat, or does not carry out the threat at all within a certain period, the threat may itself become a basis for legal action. In this situation, the party receiving such a threat may seek from the Court, a declaratory judgment; also known as a declaratory ruling.

  16. Copyright is different from trademark and works under somewhat different rules. Be careful of the phrase “Bite Me”, too. Tabasco company owns that one.

  17. Hey there. I am currently having the same problem with Zazzle.com…found you here via google. Here’s the email I just sent their Content Review Team in reply:

    ————–
    Thank you very much for your response. I have investigated the trademark, which is owned by Jim Vitello, owner of the ‘cautionwear.com’ website. The website has no information other than a phone number and the mention of clothing. However:

    1) The word ‘caution’ is a common word, particularly as used in warning signs. Common words, when not use in ‘arbitrary’ ways (e.g. Apple Computers, when apples have nothing to do with computers), cannot be trademarked. The *word itself* cannot be trademarked in such usages.
    2) What *can* be trademarked is a particular distinctive logo using that word. If you’ll note the trademark registration for Mr. Vitello’s use of ‘Caution’, there was a drawing submitted with the trademark application. This means that the trademark has been issued to a *logo* for Mr. Vitello’s company. The trademark has not been issued to the word itself, when used in a non-arbitrary way–for example, the word ‘Caution!’ appearing on a caution sign.
    3) My shirt design is a caution warning sign. Thus the word ‘Caution!’, the word itself, with the common exclamation point, is not what the trademark applies to. The trademark can only apply to Mr. Vitello’s logo. Since the website of Mr. Vitello’s business has no logo in evidence, there is yet no evidence that my shirt is in violation of his trademark. If we did have the logo available, and if my font and style of display of the word was too similar to his, so as to cause confusion among consumers, then a simple changing of my font would suffice to ensure that there is no trademark violation.

    A single word, in a common usage, cannot be trademarked. Regardless of what Mr. Vitello says, he does not have a trademark for *every* use of the word ‘Caution’, or ‘Caution!’ when used in this sort of common way. If he were to produce the logo he does have trademark rights to, we would be able to go from there.

    This being the case, I expect my design to stay in the marketplace until such a time as Mr. Vitello produces a logo that I am allegedly infringing on. And again, if I don’t hear back from you in 24 hours, I will consider this matter closed, and return my design to the marketplace if it has been removed before then.

    Thanks for your time, and your your reply with the trademark serial number. I honestly do not want to violate a trademark. However, it is an abuse of the system for Mr. Vitello to attempt to claim ownership of a common word, outside of his logo.
    ——————–

    I’ll let you know what happens if I can. I have actually had some success talking to Zazzle about such issues. I have a couple of designs with words like ‘Muggle’ and ‘Bludger’, and Rowling’s lawyers have come calling to Zazzle before. I informed them that Rowling does not have registered trademarks for those words, and is not automatically granted any special status by using the words in a book. The folks at Zazzle declined to take down my designs then, so who knows 🙂

  18. This guy makes his living suing people for trademark infringement, not by selling scratch and sniff underwear. And, unfortunately for all the little fish, no one stands to make enough selling POD t-shirts to make it worth fighting him about one or two designs. Some sort of class action might work. Maybe there could be a clarification of his trademark with the proper authorities.

    • I’m currently going through the same problem with Zazzle concerning a caption to a cartoon of a girl with her eyes closed and her lips pouted expecting a kiss, and a boy looking surprised as if he has never kissed a girl before, with the text “First Kiss?”, this text becomes the narrative of the cartoon and if this text contains a trademark then it’s perfectly legal to use it in this form as using a trademark as part or whole of a narrative is deemed non-commercial use, even if the naritive is sold or in this case the cartoon containing the naritive is put on a T-Shirt and sold.
      A trademark holder does not have the exclusive right to use a word that is merely descriptive, since this decreases the words available to describe.
      “First Kiss” is supposedly trademarked but my use has a question mark which makes it different much like the exclamation mark above.

  19. I had the same problem with CP this is what i found and have sent and gotten still working on it

    1st Email to CP

    The Word Caution alone is not in his trademark the trademark is on..
    CAUTION! UNDERWEAR CAUTION and covers Plain diamonds with single or multiple line borders (Geometric figures and solids – Diamonds)

    FYI

    Below is the information on his trademark and it is filed on clothing products. So if I use it for a bumper sticker with only the word Caution in a rectangular box it will not be at all infringing on their trademark.

    On Monday, August 04, 1997, a U.S. federal trademark registration was filed for CAUTION! UNDERWEAR CAUTION. This trademark is owned by Vitello, Jim, PO BOX 4802, COVINA , 91723 . The attorney or correspondent listed for CAUTION! UNDERWEAR CAUTION is Jim Vitello of P.O. Box 4802, Covina CA 91723, . The CAUTION! UNDERWEAR CAUTION trademark is filed in the category of Clothing Products . The description provided to the USPTO for CAUTION! UNDERWEAR CAUTION is men’s and women’s clothing, namely, boxer shorts, boxer briefs, briefs, thongs, lingerie, pajamas, nightshirts, robes and swimwear.
    The USPTO has given the CAUTION! UNDERWEAR CAUTION trademark serial number of 75335739. The current federal status of this trademark filing is REGISTERED AND RENEWED.
    Trademarkia is the largest search engine for U.S. trademarks. It is also one of the largest trademark filers in the world. You can register your trademark in 55 countries in the world through Trademarkia.
    Word Mark: CAUTION! UNDERWEAR CAUTION
    Status/
    Status Date: REGISTERED AND RENEWED
    10/18/2008
    Serial Number: 75335739
    Filing Date: 8/4/1997
    Registration Number: 2197839
    Registration Date: 10/20/1998
    Goods and Services: men’s and women’s clothing, namely, boxer shorts, boxer briefs, briefs, thongs, lingerie, pajamas, nightshirts, robes and swimwear
    Mark Description: NOT AVAILABLE
    Type Of Mark: TradeMark
    Published For Opposition Date: 7/28/1998
    Classification Information
    International Class Code(s): 025
    US Class Code(s): 022, 039
    Primary Class: Clothing, footwear, headgear.
    Class(es) Status: Active
    First Use Anywhere: 12/1/1996
    First Use In Commerce: 12/1/1996

    Latest Owner: Vitello, Jim
    PO BOX 4802
    COVINA , 91723
    Why is this contact information displayed?
    Why is this contact information displayed? [Close]
    The USPTO makes this data available for search by the public so that individuals can locate ownership information for intellectual property, much the same way a county might make real estate property ownership information available.
    Since our website is synchronized with the USPTO data, we recommend making any data changes with the USPTO directly. Our website will auto-update when the USPTO data is updated.
    You may also contact Trademarkia to make a request for the removal of your personally identifiable information or trademark data. Such requests must be made in writing and will be subject to verification of ownership. This policy allows verified trademark owners to specify: (A) that their identifiable information be masked, or (B) that their trademark pages permanently deleted from Trademarkia.com. Requests may be made directly to customer.service@trademarkia.com and every effort will be made to honor them within 48 hours.
    Click here for further details.
    [Close]
    Mark Drawing Code: Drawing/Design + Words(75% Reduction of drawing size)
    Design Search Code:
    241714
    Punctuation marks, including commas(,), question marks(?), exclamation points(!¡), ampersands(&), at symbols(@), and hyphens( – ) (Heraldry, flags, crowns, crosses, arrows and symbols – Notational signs and symbols)
    260701
    Plain diamonds with single or multiple line borders (Geometric figures and solids – Diamonds)
    Current Filing Basis: 1A
    Original Filing Basis: 1A
    Register Type: Principal
    Disclaimer: (“UNDERWEAR”)
    Attorney / Correspondent:
    Jim Vitello
    P.O. Box 4802
    Covina CA 91723

    Reply from CP

    Unfortunately we are not in a positition to re-instate your images at this time. We do encourage you to contact the party that brought the allegation of infringement to our attention:

    Caution Brand Apparel
    P.O. Box 4802
    Covina Ca 91723
    legal@cautionwear.com

    My Response

    Thank you very much for your quick response. I have investigated the trademark, which is owned by Jim Vitello, owner of the ‘cautionunderwear.com’ website. The website has no information other than a phone number and the mention of clothing. However:

    1) The word ‘caution’ is a common word, particularly as used in warning signs. Common words, when not use in ‘arbitrary’ ways (e.g. Apple Computers, when apples have nothing to do with computers), cannot be trademarked. The *word itself* cannot be trademarked in such usages.

    2) What *can* be trademarked is a particular distinctive logo using that word. If you’ll note the trademark registration for Mr. Vitello’s use of ‘Caution’, there was a drawing submitted with the trademark application. This means that the trademark has been issued to a *logo* for Mr. Vitello’s company. The trademark has not been issued to the word itself, when used in a non-arbitrary way–for example, the word ‘Caution!’ appearing on a caution sign.

    3) My shirt design is a caution warning sign. Thus the word ‘Caution!’, the word itself, with the common exclamation point, is not what the trademark applies to. The trademark can only apply to Mr. Vitello’s logo. Since the website of Mr. Vitello’s business has no logo in evidence, there is yet no evidence that my shirt is in violation of his trademark. If we did have the logo available, and if my font and style of display of the word was too similar to his, so as to cause confusion among consumers, then a simple changing of my font would suffice to ensure that there is no trademark violation.

    A single word, in a common usage, cannot be trademarked. Regardless of what Mr. Vitello says, he does not have a trademark for *every* use of the word ‘Caution’, or ‘Caution!’ when used in this sort of common way. If he were to produce the logo he does have trademark rights to, we would be able to go from there.

    This being the case, I expect my design to stay in the marketplace until such a time as Mr. Vitello produces a logo that I am allegedly infringing on. And again, if I don’t hear back from you in 24 hours, I will consider this matter closed, and return my design to the marketplace if it has been removed before then.

    Thanks for your time, and your your reply with the trademark serial number. I honestly do not want to violate a trademark. However, it is an abuse of the system for Mr. Vitello to attempt to claim ownership of a common word, outside of his logo.

    Thanks to TJ for that! 🙂 hmmm I Hope you did not trademark that TJ lol

    and now I just sent this to legal@cautionwear.com

    I have attached a copy of the file that has the allegation of infringement I would like this matter resolved so that i can use this image it is clearly not infringing on your trademark and I would appreciate you clearing this matter up with cafepress.com as soon as possible.

    Well we will see if I even get a response and BTW I did call and leave a message in the voice mail on the web site and no reply as of yet lol

  20. Wow, this Vitello character is sounding more and more like a scam artist.

    I also got the notice from CP for using the word Caution in a design, and again, my design looked nothing like his logo.

    I’ve searched everything Google’s search engine bots have found on this “clothing brand” and although I find the name at the exact words from their website repeated again and again across the internet, I can not find a single online store that carries their merchandise (if they indeed have any).

    Vitello certainly has balls though, I found records that he’s sued Nike before!

  21. I had this same problem with CafePress and Caution Brand Apparel. I made electrical caution signs for my photovoltaic system. This company’s claim is absurd. Unless they contend that all use of the word caution in a manner to prevent mistakes or injury is protected by Caution Brand Apparel’s trademark, I contend that they have no claim of trademark infringement.

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