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 Iâd 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 â delivered to my top-secret email address. The letter began: âUSA Track & Field (USATF) has become aware that MastersTrack.com is engaging in the unauthorized commercial use of USATFâs intellectual property by selling apparel bearing the name âUSA Masters Track & Field.â Oh my god!Â Someone had discovered my neatlyÂ disguised store. I read on: âPlease 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.â
Both say âUSAâ and âtrack & field.â 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.âÂ
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 USATFâs logo and name from your apparel, website and marketing materials immediately.
I need some clarification. Iâm not using the USATF logo or trademarked or copyrighted name on any masterstrack.com apparel. How is âUSA Masters Track & Fieldâ an unauthorized use of âUSATFâ? âTrack and fieldâ refers to a sport. âMasters track and fieldâ is a category of that sport. Certainly the country name isnât 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 âcertainly the country name isnât an issueâ is not correct. You would not, for example, be at liberty to market your service or merchandise by using the phrase âTrack and FieldâUSAâ without infringing USATFâs intellectual property rights. Simply put, your use of the phrase âUSA Masters Track & Fieldâ falsely and confusingly suggests to the public an association between your organization and the sportâs national governing body that does not exist. Thus, such use violates USATFâs rights. If you have any additional questions, let me know.Â
But I did get advice from legally connected friends. Their first piece of advice: Get a lawyer.Â
Youâre not using USATFâs logo, so that part of the letter certainly is baloney.
A search of the U.S. Patent & Trademark Officeâs online Trademark Electronic Search System brings up a number of live trademarks and service marks registered by USATF.Â
Interestingly, most of them include a variant of the following disclaimer: âNO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE âUSAâ and âTRACK AND FIELDâ APART FROM THE MARK AS SHOWN.â (Some just mention âUSA,â and some say ââUSAâ or âTRACK AND FIELD.'â). Â (See this screen grab.)
You can do your own search: go to http://www.uspto.gov/; follow the âHow to Searchâ hyperlink; then follow the âSearch Trademarks Nowâ hyperlink; then use the âNew User Form Search (Basic).âÂ
So your intuitive response to the letter appears to match what USATF believed when it sought to register its marks: USATF canât (and doesnât) claim exclusive rights to âUSAâ and/or âTrack & Field.â Seems like it would be difficult for USATF to have any success arguing that the insertion of an additional word it hasnât registered (âMastersâ) between two terms it doesnât claim to own somehow creates a mark that it does own.Â