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Tag: Trademark

CORONAVIRUS: Trademark Frequently Asked Questions

Hummingbird resting outside my new home office

UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.

The US Patent and Trademark Office is allowing a 30-day extension to some trademark filing and fee deadlines missed because of the COVID-19 epidemic.  The below are frequently asked questions on that extension program for trademark-related issues.

Question 1: How do I take advantage of the 30-day extension of time for certain trademark- and TTAB-related deadlines?

If an eligible document or fee is due between March 27, 2020, and April 30, 2020, the filing will be considered on-time if it is made within 30 days of the original due date, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. See Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act.

Question 2: Does the statement that the delay in filing or payment was due to the COVID-19 outbreak need to be verified or in the form of a declaration or affidavit?

No, there are no formal requirements for how the statement is made.  The statement need not be verified or provided in affidavit or declaration form. It can be provided in the relevant TEAS or ESTTA form or included in the document being filed.  TEAS filings all have a spot for a miscellaneous statement – this may be a good location to make the statement, provided it is very clear.  These statements are a certification under 37 CFR § 11.18(b), and violations of that section may be subject to sanctions.  The statements must, of course, be truthful.

Question 3: What is the standard for determining whether the delay in filing or payment was due to the COVID-19 outbreak?

A delay in filing or payment is due to the COVID-19 outbreak if the outbreak materially interfered with an on-time filing, response, or fee payment in a trademark application, registration, or proceeding.

Question 4: What circumstances qualify as materially interfering with timely filing or payment?

Circumstances that qualify as materially interfering with timely filing or payment include, without limitation, office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or similar circumstances.

Question 5: Who must have been affected in order to take advantage of the 30-day extension of time?

The person affected by the outbreak may be a practitioner, trademark applicant, registrant, or other person associated with the filing or fee.  It is unclear whether the person must actually be sick; the language of the rule says the person must be affected by the outbreak, not by the disease itself.

Question 6: When does my new trademark or TTAB filing deadline run?

Determine your new filing deadline by adding 30 calendar days to your original filing deadline, but only if the original due date was between (or including) March 27, 2020, and April 30, 2020. If the extended deadline falls on a Saturday, Sunday, or a federal holiday, the extended deadline is the next regular business day.

Question 7: Will the US Patent and Trademark Office have further extensions available?

At this time, there has been no announcement.  However, it is expected that if the outbreak continues, and especially continue to depress the economy significantly, the availability of the extension will also be continued.

Question 8: Are all trademark filings eligibility for extension?

No, only some of the filings and fees are eligible.

Question 9: What trademark filings are eligible for the 30-day extension of time if the delay was due to the COVID-19 outbreak?

First, only deadlines that are delayed due to the COVID-19 outbreak may be delayed.  Second, only certain filings are eligible, including the following:

  • response to an Office action in a trademark application, including a notice of appeal from a final refusal
  • statement of use or request for extension of time to file a statement of use in a trademark application
  • priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i)
  • priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c)
  • transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a)
  • in a trademark registration, an affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a), 37 C.F.R. § 2.160(a), 15 U.S.C. § 1141k(a), and 37 C.F.R. § 7.36(b)
  • renewal application

Question 10: TEAS is electronic and sometimes does not accept filings after the deadline.  Will TEAS automatically accept a filing made under the CARES Act extension?

Yes.  TEAS will accept your filing. Locate the TEAS form for the filing you need to make, enter the required information for the filing, and add a statement that the delay in filing or payment was due to the COVID-19 outbreak in the “Miscellaneous Statement” field of the form you are filing.

Question 11: Is the US Patent and Trademark Office open for filing trademark documents and fees even though its offices are closed to the public?

Yes, the USPTO is open for the filing of trademark documents and fees. Use TEAS for all trademark application and post-registration filings. For more information,

Question 12: What TTAB deadlines are eligible for the 30-day extension of time if the delay was due to the COVID-19 outbreak?

There are only two deadlines that can definitely be extended at the TTAB.  They are:

  • a notice of appeal from a final refusal under 15 U.S.C. § 1062(b) and 37 C.F.R. § 2.62(a)
  • a notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a)

For any other TTAB situation where the COVID-19 outbreak has interfered with a filing, you can request (in ex parte appeals) or file a motion (for trial cases) for an extension or reopening of time.  It may or may not be granted, however.

Question 13: Will ESTTA accept a filing made under the CARES Act extension?

Yes. ESTTA will accept your filing. Locate the ESTTA form for your filing, enter the required information, add any attachments, and add a statement that the delay in filing or payment was due to the COVID-19 outbreak in the attachment or appropriate field of the form you are filing. Make sure that the request is conspicuous and obvious.

Question 14: How do I receive an extension for a TTAB filing?

You must file the extension request through ESTTA and include a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Question 15: Will the TTAB grant a final 60-day extension of time to oppose because of the COVID-19 outbreak?

The effects of the COVID-19 outbreak are considered good cause in support of a second extension of time to oppose, if the first extension was a 30-day extension of time to oppose, or in support of an initial extension of 90 days to oppose, when a longer initial extension is desired. The effects of the COVID-19 outbreak also are considered extraordinary circumstances in support of the final 60-day extension of time to oppose. Fees for an extension requiring a showing of good cause or extraordinary circumstances are still required, even though the filing may be made later than when it would otherwise be due, if the delay in filing is due to the COVID-19 outbreak. When specifying the good cause or extraordinary circumstances, the statement that the delay was due to the COVID-19 outbreak can be included in the “other” basis for the extension.

Question 16: Has the USPTO provided any other relief for trademark filers in view of the COVID-19 outbreak?

Yes. For trademark applications and registrations that were abandoned or canceled due COVID-19 outbreak, the USPTO is waiving the petition fee to revive the abandoned application or reinstate the canceled registration.

The petition to revive or reinstate must include a statement describing how the missed deadline was caused by the COVID-19 outbreak, and it must be filed within two months of the issue date of the notice of abandonment or cancellation.  If the trademark applicant or registrant did not receive that notice, the petition must be filed no later than six months after the date the Trademark Office’s electronic records show that the application is abandoned or the registration is canceled.

Question 17: If I have a question about CARES Act extensions, whom do I contact?

While the Patent Office has a help email dedicated to COVID-19, the Trademark Office is using a general inbox: TMPolicy@uspto.gov.  I have found, however, that emails sent to general email addresses at the USPTO never get returned.  You can also contact the Trademark Office of Petitions at 571-272-8950, or for TTAB matters, you can use TTABInfo@uspto.gov or 571-272-8500.  You can also call Arizona trademark attorney Tom Galvani.

 



CORONAVIRUS: US Patent and Trademark Office Response

Quail eggs in our backyard

UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.

The US Patent and Trademark Office has made extensions available to filing, response, and fee deadlines in certain patent and trademark matters. The Office recognizes that the outbreak, and the economy impact thereof, have made it difficult or impossible for some entities to meet their deadlines. Applicants have been affected. Patent and trademark owners have been affected. Law firms and legal personnel have been affected. The Office is allowing some deadlines to be extended for 30 days under certain circumstances.

In all cases, a deadline can be extended only if the outbreak materially prevented or interfered with an on-time trademark filing, response, or fee payment. “Materially prevented” or “materially interfering” includes situations such as office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or other similar circumstances. Further, only certain people can claim the extension: the person affected by the outbreak must be a practitioner, applicant, registrant, or other person associated with the filing or fee.  Lastly, only deadline falling within certain dates will qualify.

If you request an extension, you need to do so explicitly and conspicuously; if the request is hidden, it will probably be delayed or may even

be missed completely. This will require further follow-up by you with the Patent and Trademark Office to make sure it gets processed – just extra work from you during a time when you don’t need more on your plate, if you’re being truthful that the outbreak has affected you. And of course, you must be truthful when making the statement. It is a good idea to at least internally and carefully document the circumstances that are preventing the filing from being made on time, and then to keep those detailed records in case a question about their veracity ever arises. I predict that in five to ten years, some patents and trademarks could be invalidated in litigation because a COVID-19 extension was taken but shouldn’t have, or because the legitimacy of the conditions around the delay could not be shown.

An extended deadline window starts the day after the original deadline. That is day 1. Day 30 – the end of the window – is 30 business days afterward, so long as day 30 is not a weekend or federal holiday. If it is, then the extended deadline falls to the next regular business day.

I’m publishing more information about the US Patent and Trademark Office’s response to coronavirus this week. In the meantime, you can contact patent and trademark attorney Tom Galvani at 602-281-6481.  During the pandemic, Tom is working remotely and will likely return your call from a 435 number.  Videoconferencing is also available.



Changing a Trademark From One Word to Two, or Two Words to One

Trademark applications frequently are filed and then need to be amended slightly. Sometimes these amendments are to change the identification of goods or services for the application, or to change the way the mark is described. Changes such as these are usually straightforward.

Sometimes, though, the trademark itself needs to be amended. This always needs to be done with extreme care and planning. This need usually arises in the context of an intent-to-use application, where an entity files a trademark application on a mark it is planning to use. Sometimes, the company or person is planning on using one form of a mark but then when the product actually goes to market, the form changes. Many times, I’ve seen a mark get filed as one word or as two words and then need to be switched to two words or one word, respectively. In other words, an application may be filed in the form ONE TWO and then need to be changed to ONETWO, or be changed from ONETWO to ONE TWO.

Changes like this are often driven by the way the mark is eventually actually used in commerce. Of course, preferably these changes can be anticipated and dealt with early; the timing of the change within the course of prosecution of the application can affect the ability and ease of making the change. Since the mark is usually already being used, changing the actual trademark is usually not an option. In other words, re-branding to keep the trademark consistent with the application is usually not an option – the costs of new designs, new printing, new labels, new stickers, new stitching, etc. are prohibitive. So usually the trademark application must be amended.

I do not recommend making changes to the mark in the application without the assistance of a trademark attorney. Per the trademark examination rules, a proposed amendment cannot materially alter the mark. If an Examiner finds that a proposed amendment materially alters the mark, the Examiner will refuse to enter the amendment, and then the application’s mark and the actual trademark will forever be inconsistent, leading ultimately to trademark application being abandoned. In some cases, depending on the timing of the amendment, the Examiner may not even be able to enter it, even if he or she would otherwise approve it. In other cases, it is better to file a response or a statement of use that shows the mark inconsistently, wait for the Examiner to raise the issue, and then respond.

Though changing the mark may seem like a very simple thing to do, it can have disastrous consequences, including abandonment of the application, and so careful planning and good counseling is absolutely necessary.



Registered Trademarks for the Amazon Brand Registry

Earlier this year, Amazon rolled out its Amazon Brand Registry, which is an effort to work with registered trademark owners to protect the customer experience on Amazon’s site. Since that time, as the official correspondence address on my clients’ trademark registration, I have received many requests from Amazon asking to validate and verify trademark owners for the registry. Enrollment in the Amazon Brand Registry provides trademark owners with improved tools for fighting trademark infringement.

It is well known that having a listing removed or a seller flagged for trademark infringement has often been a difficult endeavor on Amazon. Common types of trademark infringement or misuse I’ve seen there include:

  • Someone sells their own product using your name, logo, or trademark
  • Someone sells their own product using a name, logo, or trademark that is similar, but not identical, to yours
  • Someone hijacks your listing but ships a different product
  • Someone improperly lodges an infringement claim against a trademark you own

Handling things like the above generally required contacting Amazon’s automated service, eventually getting through to a person, and having the listing or complaint analyzed and then potentially taken down. This process was slow and cumbersome, especially if there was infringement by multiple users. And trademark owners could find themselves in a game of whack-a-mole with listings subsequently popping up under different seller’s accounts. The Amazon Brand Registry is intended to ease and speed the process of finding and handling potentially trademark infringement on Amazon.com.

Now, users who are enrolled with the Amazon Brand Registry will be able to create and upload unique videos and photos that are keyed to their accounts. Misuse of that content by others is easier to find and stop. Enrollment also gives you a faster takedown process, letting you clear infringement more quickly than with the old system. Enrolled sellers have access to text searches, image searches, and automated responses to potential intellectual property infringement. Sellers who are enrolled will also appear more legitimate to prospective customers, who may opt to purchase from that seller rather than one with a cheaper price but a more questionable status.

Some points and prerequisites concerning the Amazon Brand Registry:

  • Only owners of federally registered trademarks are eligible to participate in the Amazon Brand Registry. Common law trademarks and pending federal applications do not provide an enrollment basis.
  • Word marks are definitely eligible – these are sometimes known as “standard character marks” because they usually appear simply as capital letters without claim to style or font.
  • Composite marks appear to be eligible. Amazon says that “words, letters, or numbers in a stylized form” and “illustration drawing[s] which include[] words, letters, and/or numbers” are eligible. This seems to imply that a mark or logo having both text and graphical elements will qualify.
  • It appears that pure design marks – graphical elements which have no text, words, or letters – may not qualify.
  • You will need to provide proof of your registered trademark, as well as proof of how the mark is actually being used on the product or packaging for the product.
  • I’ve seen discussion that your trademark has to be registered on the Principal Register, not the Supplemental Register. I have not been able to verify this with Amazon, however.

If you are a trademark owner, consider the following for moving forward:

  • Registering your trademark. Registration is a fundamental requirement for enrollment now, so this action must be taken.
  • Filing the application for trademark registration now. This process typically takes at least 6-7 months, and Amazon’s requirement that your mark be registered means you should start the registration process sooner rather than later. The longer you wait to file, the longer it will take before you can enroll.
  • Registering a word mark version of your mark, if you only have a design or composite mark registered. The word mark will not only be definitely eligible for enrollment in the Amazon Brand Registry, but it typically offers the best and broadest protection for you trademark in the larger marketplace.
  • Does the way you use your trademark on listings, products, and packaging match the registered trademark? Different spelling, spacing, hyphenation, or other variations can limit your ability to use, or potentially even enroll, in the Amazon Brand Registry.
  • Failure to enroll in the Amazon Brand Registry does not mean you cannot report alleged trademark infringement on Amazon, it just means you won’t have all of Amazon’s potential tools available to you for finding and combating that infringement. Typically, clients find it difficult and cumbersome to monitor and remove trademark infringement.
  • If your trademark is on the Supplemental Register, consider moving it to the Principal Register. Not all marks are eligible for this and so attempting the move requires careful analysis together with a use and filing strategy.
  • If you were enrolled in the Amazon Brand Registry before April 2017, you will not be automatically re-enrolled. You have to manually re-enroll.

The firm has successfully filed and prosecuted many trademark applications for clients selling on Amazon and assisted in registering for Amazon Brand Registry status.  If you are in need of an attorney to guide you through this process, please don’t hesitate to contact Tom or call 602-281-6481. More info is also available at https://services.amazon.com/brand-registry.html



Acronyms as Trademarks

Guest author Jordon Trapnell, currently a second-year law student at Gonzaga, writes this nugget about trademarks embodied in acronyms:

Acronyms are very commonly used in the commercial world, but present a number of complications when it comes to trademark law. First, there would seem to be an increased likelihood of confusion (which inhibits the chances of registration) since the letters comprising an acronym could have any number of different meanings. Still, there is no law that completely prohibits registering an acronym as a trademark.

The USPTO does have a specific rule that affects how it decides if an acronym can qualify as a trademark. The rule states that “an acronym or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of the goods or services, and the acronym or initialism is readily understood by relevant purchasers to be ‘substantially synonymous’ with the merely descriptive wording it represents” (TMEP 1209.03(h)). The key to understanding how acronyms can be trademarked therefore actually lies in understanding descriptiveness.

Potential trademarks are categorized along a continuum that ranges from distinctive to descriptive. Arbitrary or fanciful marks that are inherently distinctive are generally easiest to register; marks that are only descriptive are very difficult to register. A merely descriptive mark is one that describes an ingredient, quality, characteristic, function, feature, purpose, or use of the goods or services it is used in connection with. An example could be a window company trying to trademark the name “Clear Glass Windows.” These marks are refused registration in order to prevent the owner of a mark from suppressing competition and to make sure the public is free to use the language involved. So in the context of the acronym rule, “considered descriptive” means the application would be denied.

Determining whether the wording is merely descriptive is relatively simple compared to determining if relevant purchasers usually perceive the acronym to be synonymous with that wording. In the 2003 case Capital Project Mgmt. Inc. v. IMDISI Inc., the Trademark Trial and Appeals Board upheld the objection and denied registration of the mark “TIA.” It was determined to be synonymous with the descriptive term “time impact analysis.” Time impact analysis is not a term that would be readily recognized by the general public, which shows how the wording “relative purchasers” refers to people in the field being discussed. An acronym “CPL” standing for computerized potential log – a term that appears comparable in descriptiveness to time impact analysis – was allowed registration by the TTAB because there was not enough evidence to suggest that relevant people would perceive it to be only an abbreviation for computerized potential log.

To summarize, there are a few questions that should be asked before filing a trademark application for an acronym. What does the acronym stand for, and does the term(s) directly describe the product or service with which the mark is used in connection? Do those who work in the same field have any familiarity with the term and its acronym? If the answer to both of these questions is yes, trademark registration may not be possible.



Trademark Designations: TM / MC

I saw a designation I’ve not seen before on some packaging at Costco this weekend.  We walked down the coffee aisle, and the Starbucks VIA coffee packets were branded with a NEVER BE WITHOUT GREAT COFFEE tagline followed by a “TM / MC” label.  I haven’t seen this label before (as others apparently haven’t either), so I had to do a little research as to whether this was some sort of US label I’d never heard of, or if it had to do with trademark requirements in other countries.
Canadian Trademarks
The “MC” label is a notice symbol used in Canada to designate a common law trademark.  In the US, common-law marks are identified, if their owners choose to identify them, with a “TM” designation.  The TM symbol conveys that the owner considers the mark associated with the TM to be a trademark, but has not registered the mark federally.  Federally registered marks can carry the ® label.  Similarly, Canada has a dual-mode notice system that differentiates between registered and unregistered marks.  The symbols ® or MD indicate that a mark is registered with the Canadian Trademark Office, and the symbols TM or MC indicate the mark is not registered.  MD stands for Marque Déposée, and MC stands for Marque de Commerce.  The MD and MC versions are more frequently used in the French side of Canada to the eastern part of the country, but frequently large distributors will simply mark their products with both the English and the French designations.  In Quebec, some will even use an E in a circle (for “enrigistrée”) in place of the English symbol ®. (for “registered”).

Having seen this mark in Arizona, a long way from Quebec, I am surprised that Starbucks is branding its products so widely and consistently.



Trademark Registration in Clothing Should be Pursued Cautiously

I have written previously clothing trademarkabout the difficulties – or at least the special issues – involved in registering a trademark in connection with clothing.  There is an unfortunate disconnect between the way the Trademark Office views trademarks on clothing and the way the public sees them.  Until that disconnect is corrected, however, an applicant seeking to register a trademark for clothing needs to follow the advice of its attorney and file the application very carefully.  A good, candid discussion should always take place between any attorney and client that is planning on submitting a clothing trademark application.

The recently-released case In re Lululemon Athletica Canada Inc. (here, and reviewed nicely at TTABlog) illustrates the risks involved in a trademark application filed in connection with clothing.  The Trademark Office follows a very conservative policy that often conflicts with real-world understandings.  Lululemon filed a trademark application for a variation of their mark emblazoned across the entire front of an article of outerwear.  The Trademark Office refused registration of the mark as merely ornamental, a common rejection when the goods are clothing.  The applicant argued that other companies are now using “large marks” to indicate the source of the clothing, a practice that has changed and broadened from the common left breast logo that many companies have used.  Because of this new practice, it argued, consumers recognize and understand large marks to function as source-indicators, and thus, allow the designs to function as registrable trademarks.  The Trademark Office rejected that argument, however, stating that “the design is not inherently distinctive and instead is merely ornamental.”

The Trademark Trial and Appeal Board acknowledged that “[i]t may have once been the practice in the clothing industry to limit logos to small sizes in discrete areas rather than to have them ’emblazoned’ across a garment. …  [but it] is no longer the industry practice, or at least no longer the only one.”  This, of course, is not a recognition or agreement that a “large mark” is a trademark, but is instead merely a statement that even a common rule generally viewing left breast logos as trademarks may no longer be reliable.  Not helpful for those new clothing companies using their logos in this fashion.  Nor was it helpful for Lululemon: the Board agreed with the Examiner on the ornamentality, stating that the design looked more like piping – or decoration – than a trademark.

The lesson is here is to be extremely conservative when planning a trademark application on clothing.  More exotic uses of a mark must be considered risky, and clients should carefully weigh that risk.



Re-Branding Lance Armstrong

Lance Armstrong’s confession is huge news today, mostly for the fact that it is being made and not so much for what it may or may not contain. Many are calling this an effort to re-brand Lance so that he can save his charity and continue to compete in athletic events. This blog sometimes takes on an endurance-sports bent, and it seems appropriate to discuss the effectiveness of re-branding.

Though most came to know Lance’s charity as Livestrong through the words cut into its distinctive yellow bracelets, the charity was officially known as the Lance Armstrong Foundation.  Regardless, Livestrong was proudly and widely emblazoned on a huge range of products, the proceeds of which went to the foundation.  In October of last year, the charity changed its name to the Livestrong Foundation to distance itself from its founder and to cast “a presence that was bigger than” Lance.  The Lance Armstrong Foundation has filed for 57 federal trademark registrations and owns 53 live marks.  None of them have been transferred to Livestrong yet, even those that were filed as recently as March of last year.

In November, the UK publication The Guardian attacked the re-brand of the charity as incomplete until Lance confessed to doping. “[I]n refusing to contest the doping allegations against him, Armstrong has left the brand promise undefended and lacking authenticity.” I believe, however, that in the public’s eye, the man and the charity stand separately and have done so for quite some time. Although his involvement with his charity is certainly considerable and very personal, the public doesn’t transfer Lance’s successes and failures to the charity. We saw a large rise in donations to the charity following the release of the 200-page USADA report condemning Lance’s career. His sponsors who dropped him as an athlete have continued to support the charity. I still see lots of people wearing yellow bracelets even though they don’t personally support Lance. And if see someone envisions a tarnished figurehead when they see the Livestrong name, they should think more of a person who, following cancer, roared back to compete at the very highest levels of some of the toughest endurance sports among the toughest competitors in the world. While cheating certainly helped his bike racing, it didn’t give him the mental toughness, it didn’t fuel his enormous endurance engine, and it didn’t beat his cancer. Those are all characteristics of the Lance brand that the charity need not move away from.



Done to Death?

Countless writers and bloggers, Yours Truly included, have written about a trademark owner’s obligation to protect its mark.  The subject matter is cliched, but not for lack of importance.  Patrolling and monitoring for improper use, and ensuring proper self-use and proper authorized use, are fundamentals to trademark ownership, and it is never a bad idea to revisit the fundamentals every once in a while.

What I like most about this article written by Anderson Duff of Wolf Greenfield is its careful reminder that not all trademark disputes are acts of bullying.  He did a wonderful explanation of the role of humility and civility.



The Practice of Removing Sponsored Logos in Triathlon Advertisements

Several months ago, Slowtwitch.com erupted over an altered image that had been discovered of pro triathlete Hillary Biscay. The original image showed Biscay running during an Ironman-branded race with a jersey that bears a small blue decal. That decal is the logo for REV3, which is the organizer of a series of races that compete with Ironman races. Presumably, at the time, REV3 was one of her sponsors.

The altered image appeared in a promotional piece for the World Triathlon Corporation, owner of the Ironman trademarks. In the altered image, the REV3 logo had been removed. Underneath that image ran information about Biscay and Ironman Louisville.

We frequently see the removal or blurring of logos on TV. This is often done to make it clear that the logo’s company doesn’t appear to be a sponsor of the show or the television station. But the removal of an athlete’s sponsor’s logo is something different: the athlete has a contract with that sponsor to promote the company along with his or her personality and results. The removal of the logo interferes with that the contract and the ability of the company to promote itself.

Is this something that trademark law affects? Perhaps. The doctrine of reverse passing off makes liable one who removes a trademark and attempts to pass it off as their own. The infringing party need not replace the mark with its own; instead, merely leaving the product unbranded is enough for liability. The underlying harm is from the infringing party thwarting the efforts of the trademark owner to identify the source of the product, to link the product with existing goodwill surrounding the mark, and to advertise itself. The de-branding of athletes triggers similar harms. Here, REV3’s link to a successful athlete is eliminated and the promotional value of its logo on Biscay’s jersey is prevented, and passing off seems to be a viable claim, even though WTC isn’t passing the Hillary Biscay “product” off as one of its own. Moreover, it is possible that a general claim for unfair competition may lie as well.

Despite the above, it is doubtful that the practice will be discontinued. It is fairly widespread through cycling and triathlon, and to this point, companies seem to be accepting of the fact that their marks will occasionally be removed from their products or sponsored athletes.