A while back, I discussed the New York State Department of Development’s enforcement efforts to prevent others from using the I♥NY logo. It looks like the West Coast may have learned something from the East Coast, as San Francisco’s Bay Area Rapid Transit District (affectionately known as BART) has been sending out cease and desist letters of its own.
Nate Tan is a San Francisco artist who runs an online store that sells clothing with a San Francisco flair. Until recently, Tan had been selling the shirt below:
BART sent Tan a letter demanding that he cease sales of the shirt (Tan appears to have quickly removed the shirt, and likely others as the store appears a bit bare at the moment). On its website, BART does not expressly reference its ticket as part of its intellectual property portfolio. BART does have registrations for its BART and BART BA and Design marks in Classes 16 and 39. An image of an actual ticket appears below:
Now, the likelihood of someone confusing Tan’s t-shirts with BART’s transit maps and transportation services is about as likely as a Boston Red Sox fan confusing the Yankees with the Mets. While the situation might appear to some as a case of trademark bullying, Tan has a few things working against him. First, Tan incorporated BART’s “BA and Design” mark as it appears on a real ticket, albeit with additional material to read BAY AREA rather than BART BA. The differences include the text on the left, displaying time of use on a real ticket, but which Tan used to display local area codes. Also, the vertical on the text apparently reads “All Aboard! Destination: Planet Rock. Get Your Ticket!!!”
Unfortunately, while Tan might be safe under the shorthand test for likelihood of confusion, it is important to remember that BART need not prove confusion of products – i.e., did people think this Prado bag was a Prada bag – but instead simply confusion as to source: has BART somehow endorsed the product or does it have some affiliation or connection with the product. And, as the Chicago Transit Authority website demonstrates, transit authorities can sell t-shirts (and baseball caps, mugs, purse holders, and mouse pads – which I assume are on clearance).
It isn’t obvious that BART would succeed if it were to sue Tan, but it is equally, if not more, unclear whether Tan has a defense. What matters most is that Tan is not likely making enough money to justify defending his acts. Given all the foregoing, it isn’t hard to understand why Tan quickly complied with BART’s request. What I don’t understand though is that with strikes looming, why would BART want to give its public image another hit? Tan, and his purchasers, are choosing to celebrate and cast a positive image on BART’s services. From a marketing perspective, discouraging that publicly (and looking at least a little bit like a bully) can only hurt your image. Of course, maybe BART is planning on rolling out their own shirts. They’ll have to make up for some of the lost fares if the strikes go into effect…