USATF stamps out a grave threat: masterstrack.com T-shirt

Cease-and-desist letter

Curses! USATF has foiled my nefarious plan for total world domination! My first step was cornering the market on track T-shirts. Soon I’d be king of all I survey. But alas! Lamont Jones, general counsel of USA Track & Field, has stopped me dead in my tracks. A week ago, he sent me this letter, cleverly saving the cost of a 42-cent stamp by attaching it to an email — delivered to my top-secret email address. The letter began: “USA Track & Field (USATF) has become aware that MastersTrack.com is engaging in the unauthorized commercial use of USATF’s intellectual property by selling apparel bearing the name “USA Masters Track & Field.” Oh my god! Someone had discovered my neatly disguised store. I read on: “Please be advised that the USATF name and logo were created by and are owned by USATF, and are protected under state and federal copyright laws from unauthorized copying, distribution and sale.”

Note the amazing similarities: Both have red, white and blue logos.
Both say “USA” and “track & field.” Both even have places for two arms!

Lamont continued: “Your unauthorized use of
the USATF name, constitutes willful and unlawful copyright infringement and is a violation of applicable state and federal trademark laws.” 
Then came the coup de grace:

Accordingly, you are hereby demanded to immediately cease and desist any further or future unauthorized use of the USATF name and any and all
USATF intellectual property, in any context. Please remove USATF’s logo and name from your apparel, website and marketing materials immediately.

Of course, I immediately suspected a ruse by my archrival Pete Magill. Was I being punk’d by a fellow blogger? Or was this letter for real?
So after many seconds of careful, reasoned thought I wrote Lamont this note early last Thursday morning: 

I need some clarification. I’m not using the USATF logo or trademarked or copyrighted name on any masterstrack.com apparel. How is “USA Masters Track & Field” an unauthorized use of “USATF”? “Track and field” refers to a sport. “Masters track and field” is a category of that sport. Certainly the country name isn’t an issue, so how is my reference to the sport a copyright or trademark infringement? How should I refer to the name of the sport?

But Lamont was way too quick for me. 
Putting his Phi Beta Kappa brainpower to supreme use, he replied later Thursday: 

Hi Ken. In this context, your assertion that “certainly the country name isn’t an issue” is not correct. You would not, for example, be at liberty to market your service or merchandise by using the phrase “Track and Field–USA” without infringing USATF’s intellectual property rights. Simply put, your use of the phrase “USA Masters Track & Field” falsely and confusingly suggests to the public an association between your organization and the sport’s national governing body that does not exist. Thus, such use violates USATF’s rights. If you have any additional questions, let me know. 

Ah, he got me! My NPFTWD was now toast. I immediately deleted the offending logo design from my site, and groveled for forgiveness. 
Apparently all is well. I haven’t heard from Lamont since.
But I did get advice from legally connected friends. Their first piece of advice: Get a lawyer. 
The second came from a masters track friend: 

You’re not using USATF’s logo, so that part of the letter certainly is baloney.
A search of the U.S. Patent & Trademark Office’s online Trademark Electronic Search System brings up a number of live trademarks and service marks registered by USATF. 

Interestingly, most of them include a variant of the following disclaimer: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘USA’ and ‘TRACK AND FIELD’ APART FROM THE MARK AS SHOWN.” (Some just mention “USA,” and some say “‘USA’ or ‘TRACK AND FIELD.’”).  (See this screen grab.)

You can do your own search: go to http://www.uspto.gov/; follow the “How to Search” hyperlink; then follow the “Search Trademarks Now” hyperlink; then use the “New User Form Search (Basic).” 

So your intuitive response to the letter appears to match what USATF believed when it sought to register its marks: USATF can’t (and doesn’t) claim exclusive rights to “USA” and/or “Track & Field.” Seems like it would be difficult for USATF to have any success arguing that the insertion of an additional word it hasn’t registered (“Masters”) between two terms it doesn’t claim to own somehow creates a mark that it does own. 

Still, I’ve decided to relent. 
I have much bigger fish to fry than defending a single T-shirt design – one of dozens I sell on my CafePress site. And God forbid I should make USATF really mad. They might excommunicate me just as I was leaving for Lahti! 
I write this as a cautionary tale  for all who would dare challenge USATF hegemony in the world of T-shirt commerce. 
But USATF dare not take away my Southern California Striders warmup jacket. 
I’ll give you my jacket when you take it from my cold, dead hands! You know, the jacket with the big “USA Masters Track & Field” on the back.
 

Farewell, “USA Masters Track & Field”! Your time on earth was brief but beloved.

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April 15, 2009

13 Responses

  1. Mary Harada - April 15, 2009

    Ken – got some of those banned shirts in stock? As a card carrying member of the ACLU – I am a strong supporter of those who have had stuff banned – books, speech, and now your T-shirt.
    I am happy to take one – size S – off your hands – will pay postage and handling too – and throw in a goodwill offering to the cause of Masters Track And Field .- after all cannot let those shirts just go to dumpster.
    Sheeze – get real USATF – go promote masters track and field rather than dumping on Ken’s t-shirts.

  2. michael shufelt - April 15, 2009

    I’ll take one, too (size L).

  3. Peter Magill - April 15, 2009

    Does this mean I can now sell T-shirts with “USA Masters Track & Field” on my site? Because if so, then my whole plot to get you to stop selling them on your site so that I can steal the market has paid off!
    Since the T-shirts you have are illegal contraband anyway, I’d be happy to take them off your hands … for a small price, of course.
    Seriously, Ken, tell them to stick it where the copyright don’t shine.

  4. Ken Stone - April 15, 2009

    Anyone interested in an item may write me privately: TrackCEO@aol.com

  5. Anonymous - April 15, 2009

    I wonder if USA Masteturds T&F would be OK?

  6. Lonewolf - April 15, 2009

    Ken, In my non-legal opinion that USATF’s assertion is tenuous at best.
    That said, having been on and winning both sides of copyright/trademark infringement lawsuits, I can testify that even when you win you lose.

  7. Anonymous - April 15, 2009

    USATF should be told where to stick it. You are not infringing on their brand or trademark.
    With all due respect to your graphic design skills, no-one could think you were trying to exploit their intellectual property.
    If Lamont thinks his organization has exclusive use of the words USA and track & field, he perhaps should check out the AAU track and field merchandise – which includes the terms ‘USA’, and ‘track & field’.

  8. Kevin - April 15, 2009

    This reminds me of what happened to local talk show hosts here in Portland Oregon last year.
    Mark and Dave at 1190 KEX set up a website named “Sam Adams For Mayor”. They were going to give it to our current mayor Sam Adams who was running for mayor at the time.
    Well, they got the same letter as you did from Sam Adams beer telling them to cease and desist. They were finally able to work it out since there was an actual person with the name running for mayor. They ended up auctioning off the letter for charity.

  9. simpdog - April 15, 2009

    The one on the right has a larger neck to fit big heads….

  10. Anonymous - April 15, 2009

    “intellectual property rights”…. get a life Lamont.
    I routinely delete any e-mails from USATF that are selling anything. I will never buy an “official” piece of apparel from an organization that would be so lame. While competing at nationals this year I will be sure to wear a hand lettered T-shirt offering some specific non-legal advice to the USATF’s legal counsel.

  11. Greg Gross - April 16, 2009

    I take it USATF stands for Unctuous Stuffy Anal-retentive Track and Field? Good grief.

  12. KP - April 16, 2009

    I’ll take a size medium. Or maybe I’d rather have one from another country since we continue to become less and less “the land of the free”.
    KP

  13. Ken stone - May 28, 2014

    Latest example of USATF overreach:
    http://www.trackandfieldnews.com/discussion/viewtopic.php?f=1&t=53850

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