Emails between Cautionwear and Anxiety Culture (ours in brown text):

Dear Sir,

I've been notified that use of the word "Caution" in products at my CafePress shop infringe upon your "Caution!" trademark...

I've used this satirical design since 1995. It's based on the wording of a public warning sign. Unfortunately, even this appears to infringe upon your trademark, since the word "CAUTION" is a larger size than the other text, which you apparently forbid.

Do you wish me to remove the product entirely? If so, could you please explain why.

Brian Dean
Editor, Anxiety Culture magazine

Brian Dean,

In response to your email we submit the following reply:

CAUTION® is a registered trademark for our trademarked and "trade dress" usage on our exclusive trademarked brand of CAUTION® Underwear and apparel. Registration No. 2,195,828 for the mark “CAUTION®” and United States Trademark Registration No. 2,197,839 for the mark and design “CAUTION® UNDERWEAR." Cafepress may have closed your store or requested you make changes to your product or product name because you were selling apparel bearing the CAUTION® trademark on cafepress and/or marketing these items as "Caution tee shirts, Caution boxers, Caution thongs, Caution hats etc,".

When consumers search the internet for clothing using the above search terms (and others) they are looking for apparel branded with CAUTION® and should not be diverted to knockoffs and counterfeits.

[...blah, blah blah...]

We welcome you to provide documents to support your statement that you have used this design since 1995, however we have preformed a quick check and have been unable to confirm your statement, but have found documentation that contradicts it.

A whois database search shows anxietyculture.com was created on 18-Jun-1998. On 27-Mar-2002 you wrote [in an article]:

"Recently, after resting for a year, I prepared myself to return to work for a large bureaucratic company. The prospect of going back into the corporate world filled me with dread, but my money had run out so it looked like I had no choice. I got the job after a successful act of deception at the interview." [He quotes this from an unrelated Idler/Guardian article of mine. He gives no reason for quoting it. I assume it's to show that I'm "dishonest"].

Many cafepress store owners consider caution to be an ordinary dictionary word commonly used on highways for which they feel the caution trademark should not have been issued and they mistakenly believe the United States Trademark Office made a mistake in issuing trademarks for a common word, however we do not sell dictionaries or road signs and would not object to anyone who does.

[...blah, blah blah...]

We have successfully filed lawsuits seeking permanent injunctions in the Federal Courts against those who choose to ignore the law and our requests to abide by the law.

[...blah, blah blah...]

Regards,

Ed James
[Cautionwear Legal]

Dear Ed James,

You assert that your detective work "contradicts" my claim that I've used my design since 1995. In fact, it doesn't contradict my claim at all. The design was printed in the first issue of my magazine, Anxiety Culture, produced in 1995 and advertised in at least one UK news-stand magazine (eg Fortean Times) at that time. It has been available since 1995 from distributors such as Disinfotainment and AK Press.

However, this is beside the point. For you to imply that the few products of mine which contain the word "Caution" are "knockoffs" or "counterfeits" of your products is plainly ludicrous.

I can understand why companies wish to protect themselves against counterfeit goods, but the fact that I use a common English word ("caution") within a few of my designs hardly constitutes "counterfeiting". I hadn't heard of your company before today.

I've changed the title of my products to avoid the (extremely unlikely) situation that somebody might confuse your products with mine. I hope this is sufficient. If not, please let me know.

Brian Dean
Editor, Anxiety Culture magazine

[To Brian Dean]

You have no registrations to support your argument, however we will not object if you would like to advertise your Caution shirt in "at least one UK news-stand magazine (eg Fortean Times)," if it is located on a street in the UK, and in the printed issue of your "news-stand magazine" and in the news-stand magazines "Disinfotainment and AK Press" if they are also located on a street in the UK. Please note the website disinfotainment.com was created in 2001. Unfortunately cafepress did not exist in 1995 therefore we strongly object to any stores selling apparel products which bear the caution mark alone or in conjunction with any other words phrases or symbols.

Contrary to your statement that it is extremely unlikely that somebody might confuse our products with yours, below are two examples that consumers looking for our caution brand are being diverted to cafepress stores as you will see in the results on Google in a search for caution tee shirts and caution boxers:

[He lists Google searches on "caution tee shirt" & "caution boxers". The search results include legitimate CafePress stores – not ours – which just happen to use the word "caution" in their product descriptions].

[from Ed James, Cautionwear Legal]

Dear Ed James,

You stated: "You have no registrations to support your argument".

Since I use the word "caution" in its normal English sense, and not as a marketing term, the issue of "registrations" is irrelevant.

You stated: "Unfortunately cafepress did not exist in 1995".

Difficult to see the relevance of this. It does not change the fact that my design has been available in my magazine since 1995.

You stated: "Please note the website disinfotainment.com was created in 2001".

Irrelevant. Disinfotainment distributed my magazine before they had a website.

As for your Google example, "caution" is a common word, so it's no surprise that a search on "caution tee shirt" brings up results other than your company. To suggest this constitutes evidence of people confusing my products with yours is clearly nonsense.

If you are unhappy with your company's Google rating, can I respectfully suggest you improve your website rather than bullying and wasting the time of innocent people who have never heard of your company.

Brian Dean
Editor, Anxiety Culture magazine

Cautionwear resorts to personal abuse...

[To Brian Dean]

We have requested in 3 different emails that you remove the goods, the first request was worded as follows:

[...blah, blah, blah...]

We have documented your false claims and you have not provided any evidence to support your claims and if you provided any document (such as, a copy of your magazine from 1995) it would not take priority over our registered trademarks. Trademarks are not granted to parties that claim they thought of it first or made one tee shirt and sold it in a few newstands over a period of ten years or based on an idea that was never fully developed. To claim rights in your knockoff more is required than pretending to be a magazine editor when you are simply a website owner, a free store owner and in your own words "the corporate world filled you with dread."

Our agreement to close infringing stores is with cafepress and we have made the effort to educate a few of its store owners, but unfortunately your arguments are not sound legal arguments and are not supported by the law and you continue to use the invalid and unsound legal argument that you used "caution" in its normal English sense.

[...blah, blah, blah...]

As you know in our prior email we provided you with the date of the incorrect domain of your pals CP store at http://www.cafepress.com/disinfotainment and his domain at: DISINFOTAINMENTTODAY.COM his website was Created on: 14-Jan-03 and the domain is owned by longhorn management Incorporated On: February 16, 2000. [Both the disinfotainment websites he mentions are unrelated to the UK-based Disinfotainment which distributed our zines. So much for his "research"].

Front Image: [Here he included a curious image of Bush/Hitler, the relevance of which is completely unknown to me. Very bizarre].

All of your comments and our research points to the fact that you claims are dishonest and you are unqualified to form any legal opinion of our trademark rights. Please direct any further correspondence to cafepress because they are policing themselves per our agreement 3 years ago.

Regards, Ed
[Cautionwear Legal]

CafePress (the hosts of my T-shirt design) appear to have taken my side. They sent the following email to me:

Dear Mr. Dean,

Thank you for your email.

We apologize for the unfounded claims, accusations and insults you have
received from Cautionwear. Please rest assured we are in the process of
dealing with this issue and responding to Mr. Ed James.