November, '06:

VW has been on a roll, misusing and abusing trademark law in order to harass enthusiast entrepeneurs worldwide, not to kill off counterfeiting, which is a noble pursuit, but in an effort to kill of the enthusiast fan base, who are making tiny sums of money (if that) off their own fan products like T-shirts, but even attacking of non-profit club websites.

Trademark law has been designed to protect consumers, not the companies. It is built around the intent to decieve and defraud, and it must be proven that the use of a trademark actually causes the Sr user of a mark to lose it's ability to sell it's product. Fan created gift items do NOT impede the ability of a marque to sell it's own product. In the case of VW, making a T-shirt with a design like I've posted here cannot harm the ability to sell that trademarked item, as that trademarked item (the split window VW bus) has not been sold in over 30 years!

Now, some people say that a company has to protect it's mark from dilution at any cost, but that's not legally true. This is how a Speedy Printing can operate in the same location as a Speedy Auto Glass, or a United Van Lines can operate at the same time as a United Airlines.

When the Federal Trademark Dilution Act was enacted, to protect famous trademarks against blurring or tarnishment, the federal Fourth Circuit Court of Appeals stated "[t]he real interpretive problem has been with how harm to the senior mark's selling power resulting from the junior mark's use could be proved." It rejected the method of simply presuming such harm from the identity or near-identity of the marks, the effect of which would be to create property rights in gross, reasoning that actual economic harm cannot be presumed based solely on a replicating or near-replicating junior use: "[i]ndeed, common sense suggests that an occasional replicating use might even enhance a senior mark's 'magnetism'-by drawing renewed attention to it as a mark of unshakable eminence worthy of emulation by an unthreatening non-competitor." The mere replication or near-replication of an established mark, therefore, should not be grounds for a presumption of dilution.

Thus the use of a replica of a Sr trademark (such as the shape of an old VW) is NOT grounds for infringment, OR dilution.

VW, Ford, Chrysler? Are you listening? Your lawyers are intent on killing off your fan base, with many fans deciding that you can simply go under. Is this what you want?

"In these cases, use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source.

Indeed, it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference or any other such purpose without using the mark. For example, reference to a large automobile manufacturer based in Michigan would not differentiate among the Big Three; reference to a large Japanese manufacturer of home electronics would narrow the field to a dozen or more companies. Much useful social and commercial discourse would be all but impossible if speakers and companies were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark.

A good example of this is Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir.1969), where we held that Volkswagen could not prevent an automobile repair shop from using its mark. We recognized that in "advertising [the repair of Volkswagens, it] would be difficult, if not impossible, for [Church] to avoid altogether the use of the word 'Volkswagen' or its abbreviation 'VW,' which are the normal terms which, to the public at large, signify appellant's cars." Id. at 352. Church did not suggest to customers that he was part of the Volkswagen organization or that his repair shop was sponsored or authorized by VW; he merely used the words "Volkswagen" and "VW" to convey information about the types of cars he repaired. Therefore, his use of the Volkswagen trademark was not an infringing use."

And he was doing it for profit.

T shirts with the designs of the cars are not using the trademark to describe the shirt or the shopkeeper's business, but used to describe the tradmark owner's own product. As such ,they are commentary even if used for profit, much like the VW trademark in Volkswagenwerk Aktiengesellschaft v. Church.

We, the enthusiast entrepeneurs, are not describing OUR product with their trademark. We are describing THEIR product with their own trademark.

From New Kids on the Block v. News Am. Pub., Inc., 971 F.2d 302 (9th Cir. 1992)

"The New Kids... point out that their fans, like everyone else, have limited resources. Thus a dollar spent calling the newspapers' 900 lines to express loyalty to the New Kids may well be a dollar not spent on New Kids products and services, including the New Kids' own 900 numbers. In short, plaintiffs argue that a nominative fair use defense is inapplicable where the use in question competes directly with that of the trademark holder.

While the New Kids have a limited property right in their name, that right does not entitle them to control their fans' use of their own money. Where, as here, the use does not imply sponsorship or endorsement, the fact that it is carried on for profit and in competition with the trademark holder's business is beside the point. See, e.g., Universal City Studios, Inc. v. Ideal Publishing Corp., 195 U.S.P.Q. 761 (S.D.N.Y.1977) (magazine's use of TV program's trademark "Hardy Boys" in connection with photographs of show's stars not infringing). Voting for their favorite New Kid may be, as plaintiffs point out, a way for fans to articulate their loyalty to the group, and this may diminish the resources available for products and services they sponsor. But the trademark laws do not give the New Kids the right to channel their fans' enthusiasm (and dollars) only into items licensed or authorized by them. See International Order of Job's Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir.1990) (no infringement where unauthorized jewelry maker produced rings and pins bearing fraternal organization's trademark). The New Kids could not use the trademark laws to prevent the publication of an unauthorized group biography or to censor all parodies or satires which use their name. We fail to see a material difference between these examples and the use here."

Jeep/Ford/VW do not primarily produce Tshirts. The ones they do, promote their primary product. As the court cases above shows, they can't use trademark law to prevent the use of their trademark to provide profit to another company ALSO promoting the trademark holder's product.