The LGBT greeting card company alleges their slogan is is being stolen.
It only took two words to bring Dina Proto's life to a screeching halt. "We were lying on the sofa and I was actually falling asleep and I heard 'Tell Them' and I sat bolt upright. And I said, No, they couldn't have." When Proto and her partner, Dina Poist-Proto ("the Dinas" as their lawyer calls them) founded Teazled, a greeting card company for the LGBT community, the couple chose the slogan "Tell Them" as the signature of their brand. But the commercial that rudely awakened Dina Proto was not from Teazled—it was from Hallmark. Now the Teazled founders claim they're being bullied by the greeting card giant, while Hallmark insists that Teazled is making mountains out of molehills.
When Teazled opened for business in March of 2011 the Dinas filed to trademark their company logo and "Tell Them" slogan. The US Patent and Trademark Office recorded the first commercial use of the trademarked material in August of that year. In February of 2012, Hallmark launched an ad campaign that Teazled alleges is suspiciously similar to theirs, to the point of crossing legal lines.
"We've always had that," Proto said of the "Tell Them" slogan. "It's the mainstay of our company." To the Dinas, "Tell Them" embodies everything Teazled is about, a mandate to communicate and be inclusive—which is why they're so protective of it. They accuse Hallmark of trying to steal their brand identity and of bullying them because they know Teazled is a small company with limited resources.
The commercial at the heart of the dispute is a 30-second spot featuring a montage of people looking into the camera and asking for affirmation: "'Tell me you love me,' 'Tell me you miss me,' […] 'Tell me we'll grow old together.'" A voiceover at the end declares, "Vow to tell them today," and an onscreen message directs viewers to Hallmark's "Tell Them" Facebook page. Hallmark insists that despite the similarities between their ad's language and Teazled's slogan that they do not think they are infringing on Teazled's trademarks.
"We don't think there would be any room for confusion," says Julie O'Dell, public relations director at Hallmark. "We've been willing to discuss this with them. At this point I think it's just a difference of opinion."
The Dinas disagree; in fact, they're downright angry. In February they sent a cease-and-desist letter to Hallmark, but Hallmark isn't budging. "Our advertising tagline or slogan is 'Life is a Special Occasion', not 'Tell Them'" said Hallmark's assistant general counsel David N. Johnson in his response to the cease-and-desist, arguing that Teazled cannot monopolize the basic meaning of such a commonplace phrase. "Where we do use the phrase 'tell them,' […] it is not used as a source indicator but simply as a straightforward way of conveying a particular idea." Johnson did not respond to requests for an interview.
The nebulousness of the language in Hallmark's advertising muddies the question of whether they're applying it as a tagline. The commercial uses the longer phrase "Vow to tell them" but directs viewers to a Facebook page called simply "Hallmark Tell Them", with a logo designed by Hallmark's art department that fixes the words "Tell Them" dead center. There is also a "Tell Them" playlist on Hallmark’s YouTube channel. Julie O'Dell says she believes that the company has always used short and long versions interchangeably.
Earlier this year Hallmark solicited dozens of family-themed and promotional blogs to promote the campaign, and "Tell Them" often stands out in the blog posts: "Tell Them you miss them, Tell Them you need them, Tell Them they’re still the one, Tell Them they’re your superhero, Tell Them you love them," reads GrinningCheekToCheek.com (italics in original), for example, language echoed and even repeated verbatim on similar sites.
So is Hallmark emphasizing "Tell Them" as a tagline or not? That may depend on whether that's the blogger's language or Hallmark's. O'Dell says that Hallmark does not provide instructions or writing guidelines to independent bloggers, but speculates "that could very well be the language we used when we contacted the blogger." Ashley Capps of FreckleberryFinds.com (which features the previously quoted "Tell Them" litany word-for-word) says that Hallmark "may have provided general guidelines or certain key phrases" to use but could not recall specifics.
"Jammie" of TheNeatThingsInLife.com (who declined to provide a legal name), on the other hand, vigorously denies any coaching from the company: "I personally, and let me make it clear, I, me, myself, the one responding, the one that posts on my site, was never in no way shape or form asked to post anything. The information I posted is in my own words, not copied from no one, or anything." The Neat Things in Life employs language markedly different from the other cited blogs and from Hallmark advertising.
Uncertainty over who used what language and when cuts to the heart of any trademark dispute: the potential to confuse consumers. If there's a reasonable chance that the average consumer could mistake Teazled as being related to Hallmark because of the advertising, only then would Hallmark be at fault. "It all comes down to the matter of confusion," says Lawrence G. Townsend, an intellectual property attorney with no connection to either party. "All trademark rights arise out of use, that's critical."
Teazled is assumed to have common law rights on the phrase dating back to whenever they first began using it prominently, and when the registration process is complete the trademark applies retroactively back to when the registration was first filed, says Townsend. But Hallmark's attorneys contend that their use of the trademarked phrase doesn't matter because there's simply no way any consumer would assume a relationship between the two companies because of it. Lisa Moyles, a lawyer the Dinas procured through the National Gay and Lesbian Chamber of Commerce, says that Hallmark's argument shows a "fundamental misunderstanding of the law."
"When you think about the way Teazled has been using [the phrase], they consider it part of their brand, their tagline, their logo. If you look at the way Hallmark has been using it, it appears to be the same," Moyles says. "It's the same line of commerce, it's the same client base, it's the same goods and services." Moyles adds that she is skeptical that a company with Hallmark's resources would not have known about Teazled's ownership of the phrase before launching their campaign and that most in-house counsels would advise against employing a trademarked phrase regardless of the use.
Julie O'Dell says she feels the company has been fair in their dealings with Teazled and is willing to try to put the matter to rest. "The lines of communication need to be open, and ours are," she says.
The Dinas say they don't have the financial means to fight Hallmark in court but will keep fighting in the court of public opinion. "My plan is to continue with my trademark and hope that the public will back us up," Dina Proto says.
"It's a tough spot," Lisa Moyles says of Teazled's position. "Do they even have a snowball's chance in hell, other than Hallmark standing up and not going down this route? I don't know."
It's a big conflict over just two words, but as Hallmark itself so often reminds us, the little things in life make a big difference. (teazled.com)