Mirror, Mirror on the Wall, Who’s the baddest Mark of Them All
If you were asked to list the most popular trademarks in the US, what would your answer be? It would likely consist of Apple, Google, Coca-Cola, McDonalds, Wal-Mart, Bank of America, Microsoft, Pepsi, General Motors, Ford, Facebook, Nike and a few other household company names. When looking at such a list, what is one thing that they all have in common? They are all front and center of our daily lives. It’s a challenge to go a day without seeing those companies’ marks. We see them when we open our computer, when we drive to and from places, and when we are watching television. These companies’ trademarks are not only recognizable, they are the fabric of our social-economy.
Thus it comes as no surprise that these marks are extremely valuable. Companies recognizing this will protect their marks to the fullest extent of the law. The Lanham Act plays a major role in protecting trademarks of companies. Importantly, the Lanham Act is the best protection that these Fortune 500 companies can afford. Although, there does exists an entity which has way more protection than any corporation in the land. In effect, this entity has “super” trademark protection. This entity will never generate the revenue of a Apple or a Coca-Cola. You will not see this entity every day as you will a Ford or a McDonald’s. Heck, it’s not even a entity which has its genesis in the United States of America. Can you guess the entity? Probably not.
If you have the slightest knowledge about the policies behind trademark law, you know that your failure to guess the entity should draw red flags. The general goal behind trademark law is that the government wants to protect the goodwill of a businesses and to limit consumer confusion. Both goals are premised on the notion that an entity has invested in its mark and that the consumer is able to identify that mark as relating to a particular producer or servicer. So how has an entity who cannot advertise its mark on the scale of a Wal-Mart of General Motors, have more protection than those aforementioned companies? The answer is politics.
If you have yet figured out the entity that I am referring to--the answer is “Olympic.” You might be saying to yourself: “Olympic is a word, not an entity.” And there is the problem. Who is the producer of “Olympic” or “The Olympics”? Isn’t it NBC? Wrong, remember the earlier hint. The entity is originally foreign to the United States. If you must know, the International Olympic Committee (IOC) produces and manages both the Summer Olympics™ and Winter Olympics™. The United State Olympic Committee (USOC) is the operating organization of the IOC in the United States. Thus, USOC is the right holder of the term “olympic” and its variations. So what is this “super” trademark protection and why does the IOC have this in the United States? Additionally, what impact does this have on businesses and on the evolvement of trademark law?
“Super Trademark Protection”
In 1978, Congress passed the “Amateur Sports Act of 1978.” The purpose of the act was to incorporate the USOC and “to provide it with a mechanism for resolving disputes among the various sports organizations and the athletes.” Oddly, the legislative history is void of any express mentioning that there was a market need for legislative trademark protection. Congress gave the trademark provision a cursory glance as it merely summarized the trademark section of the Act.
The Act is codified in 36 USC 371 et seq. Section 110 of the Act provides:
(a) Without the consent of the Corporation, any person who uses for the purpose of trade, to induce the sale of any goods or services, or to promote any theatrical exhibition, athletic performance, or competition--
(1) the symbol of the International Olympic Committee, consisting of 5 interlocking rings;
(2) the emblem of the Corporation, consisting of an escutcheon having a blue chief and vertically extending red and white bars on the base with 5 interlocking rings displayed on the chief;
(3) any trademark, trade name, sign, symbol, or insignia falsely representing association with, or authorization by, the International Olympic Committee or the Corporation; or
(4) the words ‘Olympic’, ‘Olympiad’, ‘Citius Altius Fortius’ or any combination or simulation thereof tending to cause confusion, to cause mistake, to deceive, or to falsely suggest a connection with the Corporation or any Olympic activity;
shall be subject to suit in a civil action by the Corporation for the remedies provided in the [Trademark Act of 1946].
Additionally, Sec. 110 provides that anyone using the olympic mark prior to September 21, 1950 may continue to use the mark for the same goods and services.
This law essentially finds a entity liable for damages and subjected to injunction by the simple showing that the mark “olympic” was used. Juxtapose to traditional trademark law which requires a showing of some sort of consumer confusion, the USOC is only required to show that the mark is similar. Under traditional trademark law, it is not enough for a senior user to show that the junior user’s mark is the same or similar. The senior user has to additionally show that there is consumer confusion. Thus Delta Airlines, cannot win a trademark infringement suit against Delta faucets simply because the marks are similar. Delta Airlines will be forced to show that consumers are confusing the junior mark with Delta Airlines. Without this showing, Delta faucets may continue to use the mark without liability. Therefore, the USOC has obtained super trademark protection for its marks because congress has eliminated a pillar-element of a trademark cause of action.
When asked by Congress to analyze the trademark section of the Act, the Patent and Trademark Office (PTO) did not mention anything pertaining to the departure of principled trademark considerations. The PTO merely edited the language of the section so that the extent of section’s coverage was not vague.
So What Impact Does the “Super Mark” have on the market and the trademark law itself?
The impact on this super mark protection on the market is essentially limited to the sports realm. The argument could be made that in the sports realm, the term “olympic” is generic. The word promotes the idea of people from different walks of life coming together to compete in a friendly athletic competition. Because of the Amatuer Sports Act of 1978, an entity would be unable to even attempt to use the term “olympic” in its competition name even if there will likely be no consumer confusion. This issue was dealt with in San Francisco Arts & Athletics, Inc. v. United States Olympic Committee, 483 US 522 (1987). In that case the petitioner organized the “Gay Olympic Games.” The petitioner attempted to argue that Sec. 110 of the Act did not terminate the requirement that USOC had to prove consumer confusion. Contrary, the Supreme Court held that the statute was clear that the USOC was given an “exclusive” right to use the term “olympic” and that such an exclusive grant by Congress suggested it did a “consumer-need” analysis.
The fact that the USOC can bring suit against any entity using its mark in any industry will not have an impact on markets outside the sports industry. Although, the door of legislative trademarks are now open to any major company who has the money to provide campaign donations to 51% of Congress and a campaign donation to the President. It may actually be cheaper to lobby for “exclusive” trademark status than for major corporation to continuously hunt down junior users. When you have an exclusive right to a mark, you don’t have to police every minor usage. A trademark holder is now not vulnerable to losing trademark protection for failing to police its mark. Additionally, if a company is afraid that their mark is subject to “genericide,” it may be in the company’s interest to push for legislative trademark protection.