July 18, 2012
Every four years as the Olympics approach, I am reminded of an incident from my past. In college, I was friends with several members of a band known as the Olympic Hopefuls. They had a great shtick and a killer sound. But they also had a big problem; their name. Well, that and the owner of the trademark on the word Olympic, the United States Olympic Committee (USOC).
The USOC has the exclusive right to use, “the words ‘Olympic’, ‘Olympiad’, ‘Citius Altius Fortius’, ‘Paralympic’, ‘Paralympiad’, ‘Pan-American’, ‘America Espirito Sport Fraternite’, or any combination of those words,” and is authorized to bring a civil suit to enforce that right. 36 U.S.C.A. § 220506.
And they take the exclusive part seriously.
A simple search on WestlawNext in All Federal materials for the terms olympic trademark infringement yields quite an impressive list of cases brought by the USOC against those it sees as infringing on its trademarks.
And most often, the USOC is successful. Perhaps the best known example of where it fell short is the case of Stop the Olympic Prison v. U.S. Olympic Committee, 489 F. Supp. 1112. In that case, a group was challenging a proposal to use the Lake Placid Olympic Village as a prison following the completion of the 1980 Olympic Games. The USOC counterclaimed, alleging, inter alia, trademark infringement. The court concluded that posters printed by the group publicizing their cause did not fall within the Amateur Sports Act’s (ASA) provisions because the posters were “not used ‘for the purpose of trade,’ or ‘to induce the sale of any goods or services, or to promote any theatrical exhibition, athletic performance, or competition.’ None of the posters ha[d] been sold or distributed commercially, and they [were] available free of charge.” Id. at 1121. The court also refused to find any trademark infringement or dilution.
But generally, the trademark held by the USOC is incredibly powerful. As articulated by the United State Supreme Court in San Francisco Arts & Athletics, Inc. v. U.S. Olympic Committee, 483 U.S. 522, “[the] legislative history [of the ASA] demonstrates that Congress intended to provide the USOC with exclusive control of the use of the word ‘Olympic’ without regard to whether an unauthorized use of the word tends to cause confusion.” The Court also held that while the ASA provided the USOC the ability to pursue traditional Lanham Act remedies, it did not similarly provide alleged infringers with the traditional defenses to trademark claims. In fact, in discussing defenses available to the alleged infringer, the Court noted only in a footnote that a “user may, however, raise traditional equitable defenses, such as laches.” Id. at 531 n.6. This is little consolation to those perusing the contents of their USOC “cease and desist letter.”
And as a quick News search on WestlawNext for U.S. “united states” +2 “olympic committee” /p infring! will show you, that may be a lot of folks.
Additional Research Reference:
For a list of Statutes Relating to the Protection of Specific Names, Characters, and Designs (from American Ex-Prisoner of War to Woodsy the Owl), see 6 McCarthy on Trademarks Appendix A2 A (4th ed.).
According to the statute, the symbol of the International Paralympic Committee consists of 3 TaiGeuks. TaiGeuks do appear in the USPTO Trademark Design Search Code Manual. Design descriptions which include the term (or, its derivative, “taegeuk”) use 01.15.08 DROPS (INCLUDING RAINDROPS AND TEARDROPS). On Westlaw, try:
dsd(tai-geuk tae-geuk) in Fed-TM
Note that Westlaw omits the periods from the design code. So, to search using the design code, convert 01.15.08 to 011508.