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Tag: triathlon

Trademark Likelihood of Confusion, in Triathlon Products

Today, a basic primer on trademark infringement and an example of something that seems pretty clear. A registered trademark gives the owner the right to prevent anyone from using a mark in a way that is likely to cause confusion. This “likelihood of confusion” is fleshed out in a multi-factor analysis of the similarity of the marks, the products, the channels of commerce, and other aspects of the use.

Importantly, a likelihood of confusion analysis is not solely based on whether two marks have a similar name or appearance. The strength of the registered mark, the similarity of the goods or services on which the marks are used, the similarity in the sight, sound and meaning of the marks, evidence of actual confusion, the similarity of the channels through which the products or services are marketed, the sophistication of the consumers and their ability to distinguish between two marks, intent of the other party, and the likelihood of market expansion by the parties are all considered. However, frequently, the two most important factors in the analysis are: 1) the similatiry of the marks, in sight, sound, and appearance, and 2) the similarity of the goods or services on which the marks are used. Indeed, strong similarity, or even identity, between two the appearance of two marks can dominate the analysis and reduce the need for similarity in the other factors.

Occasionally, you will see two marks that are identical, and infringement is clear. This is often the case where a product is copied wholesale. However, you will often see unfortunate coincidences. I believe the below is an example of that.

Polar is a company that manufactures fitness electronics, such as GPS watches, cadence and power meters, and heart rate monitors. It is well known in the running, cycling, and triathlon communities as one of the leading electronics developers. A lot of athletes use and love Polar products. Polar has a registered trademark (No. 1,836,604) for a stylized design of its name, shown here:

Mark Image

The mark is registered in connection with “computer interfaces and software to be utilized with heart rate monitors for athletic and medical use” and for “heart rate monitors for athletic and medical use.” You most often see the mark in this form:

On the way to Ironman 70.3 Oceanside in California last March, my racing buddy was looking through a triathlon magazine. He was thumbing through the pages looking for his national ranking. Out of the corner of my eye, I spotted what I thought was that distinctive black-red-black logo Polar, and I looked over. I saw this:

ROLA trademark

Now, these marks are not identical. But they are close! First of all, the literal element of the mark is nearly the same: POLAR versus ROLA. Three letters the same, with the only different letter R being only very, very slight different from the letter P. Then, the same second letter is red, contrasted with black in the rest of the word. Arguably, the POLAR trademark registration makes no claim of color, but one can’t argue that the same colors typically used don’t contribute to at least a first impression, perhaps causing an initial interest based on color confusion. Once the colors have grabbed the onlooker’s attention, then the protected aspects of the trademark registration play a heavier role. Lastly, both marks have a negative strikethrough element running through all of the letters, and at the same height in each mark. All of these elements combined present a case of near identity between the marks.

Now, the products are not that similar. POLAR is used for heart monitors, and ROLA is used for cargo baskets. But they do both have an athletic focus. Further, both products are routinely marketed, as seen here, through triathlon channels. The case of infringement is strong here, but I think (or hope) that ROLA’s adoption of the mark was coincidental or perhaps was unknowingly, subconsciously inspired by POLAR.

Angelo’s, In-N-Out Burger, and their Confusingly Similar Signs

A few weekends ago I competed at Ironman 70.3 Oceanside in California. Oceanside has some restaurants I’ve not seen anywhere else before, in the country or even in California. One of those was a place called Angelo’s, which served everything from burgers to gyros to Mexican. It was decent enough, though probably not the best race food. What struck us was the sign out front. The friend I traveled with is not a lawyer, but he is in sales, so he may be more sensitive to logos than the average bear. We both noticed the sign immediately:

The color scheme and prominent shape of the stylized “A” instantly conjured up the iconic In-N-Out Burger sign.  You know the one:

ironman oceanside triathlon in n out

I have no idea how there has not been a lawsuit over this sign. In-N-Out hasn’t shied away from suing others for trademark infringement in the past.  The Angelo’s logo above is interesting because it appears only on the signs that face the road – the signs on the top sides of the restaurant had upstanding As (think Alvin and the Chipmunks “A”).  The road signs are in a place where motorists will catch only a quick glimpse of it from afar or as they pass by.  And with that quick glimpse, the color combination, the angled A, and the writing superimposed through the middle of the A could easily confuse the customer.  It did us, even after we knew we were going to Angelo’s.

Next post: the other incredibly similar trademark infringement we saw during this triathlon trip: ROLA v. POLAR.

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.

Can I use the Ironman trademark to describe a race I did?

The Ironman trademark (the second link is to one of the many Ironman registrations) is an extremely valuable trademark to the World Triathlon Corporation. The WTC works to protect its unauthorized use (though sometimes I do question their authorized use). I have heard questions before from other triathletes about how they can use the Ironman word mark, whether in blogs, on t-shirts, in articles.

Ownership in a trademark doesn’t convey the right to remove the use of a word from English. Instead, it provides an exclusive right to prevent others from using the mark in a confusing way, one that may damage the trademark owner’s goodwill in the mark or the mark’s own ability to differentiate the underlying product or service from others.

Consistent with this, the public doesn’t always need to request permission from the trademark owner to use the trademark; that permission is only necessary in certain (but many) situations. Permission isn’t necessary when the use meets the legal definition of “fair use.” Some uses are frequently considered fair, such as a 15-second clip of a motorcycle stunt on the evening news, or a professor’s copying of a portion of a newspaper article passed out in class. Comparative or nominative uses are often considered fair, as well: if BMW names Mercedes in a commercial to say how it outperformed their car, for example, that use is likely not infringement.

The use that many people worry about and have asked me about likely falls under fair use. It would be fine to write an article about your experience at Ironman Lake Placid and use the Ironman trademark in the body of the article. You’d be okay writing a book about your journey to the Ironman World Championships and identifying the various races you competed in as Ironman races. You are using the mark only because you are naming the specific event, and identifying the event without using the trademark would be unduly burdensome. Imagine how difficult it would be to describe the event without using the trademark: for instance, last November, I competed in a branded race where I swam 2.4 miles, biked 112 miles, and ran 26.2 miles in Tempe, Arizona, versus, last November, I did Ironman Arizona.