Did Shop412 Just Trademark "412?" The Short Answer: No
Go ahead and create your 412 gear without worry.
Can a company trademark an area code? Apparently, the University of Pittsburgh's football team thought that was the case when they allegedly received a cease and desist letter from Pittsburgh specialty retailer Shop412, demanding that the team remove the "412" from their new game helmets.
The aggressive move has sparked confusion and controversy among those who think Shop412 has over-stepped its bounds.
Shop412 tried to smooth over the controversy with a tweet saying they were working with Pitt to create "authentic" 412 gear for the team. Still, the community isn't having it, and had a lot to say.
I sat down with Jim Dilmore, an adjunct professor at the Duquesne Univeristy School of Law specializing in intellectual property, to get the low-down on the 412 trademark dispute.
According to Dilmore, and clearly displayed on the United States Patent and Trademark Office website, Shop412 did not register the trademark for the plain text "412." If they are sending cease and desist letters for the use of all styles of "412," Professor Dilmore thinks they "need to calm down." And I, in all my first-year-evening-law-student-glory, completely agree.
Here's what they've actually registered with the USPTO:
In legal terms, Shop412 has registered a stylized trademark that protects the design of their 412 logo as used in commerce for selling athletic apparel with the four-point star incorporated into the "4" and the stylized digits 1 and 2.
That's specific. And it does not cover all uses of "412."
According to Professor Dilmore, "a trademark is used as a unique identifier of the source of goods or services associated with that trademark. It protects consumers and eliminates brand confusion so that, for example, when you get a bottle with a Pepsi symbol on it, you know that what you're getting is from Pepsi."
But when you see something that says 412, does your mind immediately assume it's a Shop412 product? Probably not.
Further, trademarks are often limited to a certain market. After all, you wouldn't confuse Dove Soap with Dove Chocolate, would you? Again, doubtful.
What's more, to be granted a trademark, a business has to be painstakingly specific about exactly what the trademark looks like. So, the numbers 4, 1, and 2, in that order, is not sufficiently distinct for a trademark registration. But stylized numbers "412" with a design of a four point star beneath the "4" is perfectly specific. And that is exactly what we have here.
[For those with an interest in law, there's a difference between being a registered trademark and an unregistered trademark (? vs !). In the U.S., the owner of the an unregistered trademark can receive some protection, but not as much as a registered trademark.]
So, while you can register a trademark for having a specific design, which Shop412 has done, that doesn't mean no one else can use "412." Shop412 has not trademarked the area code. Any local businesses that are concerned that their products are in violation can breathe easy.
Still, this begs the question: why did Pitt remove the 412 from their helmet, if only the specific "stylized 412" is trademarked? And why, if the rumor is true, is Shop412 sending cease and desist letters for the use of something they have not registered?
Neither Shop 412 nor Pitt Athletics returned request for comment prior to publication.