USATF stamps out a grave threat: masterstrack.com T-shirt
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.”
Both say “USA” and “track & field.” Both even have places for two arms!
the USATF name, constitutes willful and unlawful copyright infringement and is a violation of applicable state and federal trademark laws.”
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.
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?
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.
But I did get advice from legally connected friends. Their first piece of advice: Get a lawyer.
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.