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Coexist Round
Design
on a Square Sticker
As you may have noticed,
we sell a lot of "Coexist" designs on this site. There
is a reason for that: "Coexist" designs sell well in these
troubled times. Some of the "Coexist" designs we sell have
been supplied to us by other companies. But a few, including this one,
are our own unique creations.
You might think that a
"Coexist" design would encourage people to get along. We hope
that is true. But the sad fact is that there are various versions
of this design being sold and used in various ways, and there are
conflicting claims of ownership related to some of those designs. One
company has even been threatening to bring legal action against other
companies that try to sell Coexist designs.
Here is the story of this
controversy in a nutshell: In 2001 a relatively simple
"Coexist" design incorporating three religious symbols was created by Piotr
Mlodozeniac, a Polish graphic designer, for a
contest sponsored by The
Museum on the Seam for Dialogue, Understanding, and Coexistence
in Jerusalem. The Museum has incorporated Mlodozeniac's design into a
traveling exhibit and also sells shirts, posters, etc. bearing the
design. The Museum claims exclusive ownership of the design.
But the Mlodozeniac design
has apparently been used extensively by others without permission. The
Museum on the Seam seems to take a very dim view of this, while
Mlodozeniac himself seems to take pride in some of the ways other people
have used his design. For instance, U2 has used the image in
concerts, which no doubt boosted interest in the design.
But Mlodozeniac
was dismayed to learn that a small Indiana T-shirt company called
Coexist LLP successfully
trademarked his "Coexist" design in 2005. The Indiana company
subsequently
brought a lawsuit against CafePress and three other vendors who had been selling products bearing similar
"Coexist" designs.
You can read more about
the legal wrangling over various versions of the "Coexist" design by
visiting @U2.
In the winter of 2007-08,
Coexist LLP sent cease-and-desist letters to several sticker and T-shirt
companies demanding that they stop selling various "Coexist"
designs. The letter threatened legal action if these companies did not
comply. The letter was sent to some of our suppliers, and it
remains to be seen whether or not we will be able to continue buying
certain "Coexist" products from those suppliers.
CarryaBigSticker also received a copy of the
cease-and-desist letter (see text at right). We have chosen to ignore
the letter for a variety of reasons, not least of which is that,
contrary to the letter, we have never sold any "Coexist"
designs that are identical (or even very similar) to the trademark
registered by Coexist LLP. Also, we have never tried to pass off our
products as those of Coexist LLP. In other words, we are not using
"Coexist" designs as trademarks. We are selling an important
peace-related message, a message that has the full free-speech
protection of the First Amendment.
CarryaBigSticker is not
involved in any litigation related to the "Coexist" design. We are
hoping it stays that way. We feel the "Coexist" designs that we sell
are quite a bit different from the Coexist LLP trademark, and therefore
unlikely to be the target of litigation.
Despite the risk of
litigation, we want to help distribute a variety of
"Coexist" designs because we
believe the concept of coexistence is too important a concept to be
distributed only by a few. The concept belongs to all of us, and should
be distributed by many.
Meanwhile, Coexist LLP recently petitioned the U.S.
Patent and Trademark office to expand the use of its trademark to other
products. Their original trademark application expressed the intention
to use the mark on apparel. Their latest applications would expand their
use to stickers and posters, as well as jewelry. If these applications
go unopposed, Coexist LLP will be in an even stronger position to
attempt to limit the use of Coexist designs on stickers, posters and
jewelry.
Dan R. Frazier
If you would like
to let Coexist LLP know how much goodwill they are generating by
threatening to bring legal action against other companies selling
original Coexist designs, you can e-mail Christopher Tierney, one of the
owners of Coexist LLP:
Chris (at)
CoexistOnline (dot) com
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| See more from our Religion,
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categories. |
| Below is the
text of the cease-and-desist letter received by CarryaBigSticker
and several other sticker and T-shirt companies in the winter of
2007-08. Care has been taken to retain misspellings and
malapropisms found in the original. We at
CarryaBigSticker have inserted a few comments in yellow:
McCarter English
Attorneys at Law
Re: Infringement of COEXIST Registered Trademark
Dear Mr. Frazier:
We represent Coexist LLP ("Coexist")
in connection with trademark and unfair competition matters.
Coexist is a company that enjoys a prominent reputation in the
premium apparel and gift market with fashion conscience and
sophisticated individuals and the general public, as well as among
high-end fashion boutiques and department stores. (We
at CarryaBigSticker never heard of Coexist LLP until this legal
controversy came to our attention.) Coexist's mission is to
promote global harmony, and a certain portion of Coexist's sales
are donated to charitable organizations. (Trademarking
somebody else's design without permission and then bringing
lawsuits against others who sell similar designs, and threats of
legal action even against those who sell not-so-similar designs,
seems counterproductive to global harmony.)
As you may know, our client adopted the COEXIST
design and word marks (the "COEXIST TRADEMARKS") as
early as August 2003 as trademarks for its high quality apparel
items. As a result of its widespread use of the COEXIST
TRADEMARKS, Coexist has developed valuable goodwill in these
particular marks.
Moreover, the use of our client's COEXIST
TRADEMARKS has been recognized by the United States Patent and
Trademark Office, which has granted the following registrations to
Coexist: Registration No. 3,170,918 which issued on November 14,
2006, and Registration No. 2,924,211, which issued February 1,
2005.
It has come to our attention that you are
engaging in trademark infringement and unfair competition under
the Federal Trademark Act, 15 U.S.C. S 1051 et seq. ("The
Lanham Act"). In particular, on the website "carryabigsticker.com"
your use of the identical mark on identical goods traveling in the
same channels of trade and marketed to similar customers is likely
to cause consumer confusion as to the source of origin of said
goods. (CarryaBigSticker does not sell any
products bearing an "identical mark" and we never have.
Furthermore, we sell in different channels and to different
customers. We do not sell our products in fashion boutiques or
department stores. Our customers are not so much fashion conscious
as they are concerned about conveying a message of peace,
tolerance and coexistence.) Both fashion
professionals and the general public may be misled, if they have
not already been, into mistakenly believing that your buttons and
bumper stickers ("Products") are approved or sponsored
by our client, or that you are affilliated with Coexist. (It
is odd that there is no mention here of the Coexist T-shirts sold
by CarryaBigSticker. Also, we think it odd that buttons and
stickers raise an objection, even though the initial trademark
obtained by Coexist LLP makes no mention of an intent to deal in
such products. Only recently has Coexist LLP applied for a
trademark related to stickers. This was apparently an
after-thought.)
Moreover, given that Coexist sets a high
standard for quality in the industry, as its many customers would
confirm, confusion could lead to substantial damage to our client
in terms of loss of sales and injury to reputation, as well as the
loss of funding to those charitable organizations Coexist
sponsors, in the event that the quality of your Products is not
commensurate with that of Coexist. (CarryaBigSticker
maintains its products are of commensurate quality, and the real
damage to the reputation of Coexist LLP arises from its
questionable lawsuits and unjustified threats of legal action.)
There is simply no functional rationale for your
slavish coping of the COEXIST TRADEMARKS other than your desire to
infringe upon our client's goodwill. (There
has been no slavish copying here at CarryaBigSticker, and no
desire to be in any way associated with any goodwill or any other
sentiments that may be engendered by Coexist LLP.) A wide
variety of designs are possible without interfering with or
compromising the intended "look" or "feel" of
your Products. Accordingly, Coexist demands that you, and any
party acting for you or on your behalf, immediately cease
marketing and selling COEXIST branded products on [where sold]. (Apparently,
the lawyers could not even be troubled to fill in the "where
sold" with the CarryaBigSticker Web address.)
We are prepared to resolve this matter amicably
if we receive your express written agreement to comply with
Coexist's request within seven (7) days after your receipt of this
letter. If you fail to advise us by that date, our client shall,
without further notice to you, take such legal action as it deems
advisable to protect its interests.
Please note that this letter is being sent
without prejudice to, nor waiver of, any rights, claims, defenses,
or contentions held by Coexist.
Very truly yours,
Gary H. Fechter |
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