“What’s in a Name?” Billions of Dollars, That’s What

Travis Waller, MJLST Staffer

Cease-and-desist letters have long been one of the most commonly used, and perhaps more potent, of the tools relied upon by organizations and legal counsel to cut short unauthorized 3rd party use of material relating to that company’s trademarks. In 2013, Marcella David published a fascinating article in vol. 14 of the Minnesota Journal of Law, Science & Technology entitled “Trademark Unraveled: The U.S. Olympic Committee Versus Knitters of the World”. This article discussed the “scandal” surrounding the U.S Olympic Committee’s (USOC) harshly worded cease-and-desist letter sent to the operators of a website for knitters, called ravelry.com. What did ravelry.com do to receive this response? Ravelry.com hosted a kind of knitting competition, which it called the “ravelmpics”, in which the site would promote various events (such as the afghan marathon) and award “blog badges” to the winner of these events. Ravelry.com even had commemorative pins made up to memorialize the event.

Soon after the announcement of the “ravelmpics”, the USOC sent a cease-and-desist letter to ravelry.com. The outrage surrounding the USOC’s cease-and-desist letter (which complained that the “ravelympics” made light of Olympic athlete’s lifetime of training and dedication, among other things) was immediate and intense, so much so that the USOC actually apologized to ravelry.com for the letter twice, as well as blamed the contents of the letter on an over-zealous summer associate within the organization’s legal department.

While this event may mark the upper limits of the strange when it comes to brand protection, the Olympic committees appear to have not lost their appetite for using their trademark rights in the word “Olympic” as a sword, as the International Olympic Committee recently carved up the name of a Portland charcuterie shop, now known as Olympia Provisions.

Bologna, right? Not necessarily. (Olympia Provisions prides itself on it’s salami). While organizations like the USOC’s actions against these companies may seem harsh – even ridiculous – at first blush, there can be very real harms to an organization’s branding efforts and trademark protection if prevention of unauthorized use is not vigorously enforced. Remember Aspirin? Linoleum? Trampoline? These names, which have now fallen into common use as terms for items, used to be trademarks. That is, aspirin used to denote a brand of acetylsalicylic acid, made by the company Bayer, and branded as “aspirin”.

This loss of rights is due to an aspect of trademark law that allows the expiration of trademark protection for certain marks that lose their status as “source identifiers”. While it may be difficult now to imagine the word “Olympic” as ever losing its connection to the Olympic Games, words have a funny way of changing meaning simply through their usage over time. To this point, consider “literally”, which today is synonymous with both “actually” and “figuratively” (“literally” antonyms of each other).

Aside from the USOC, the NFL is another large entity that actively enforces it’s use of the “SUPER BOWL” mark through cease-and-desist letters, and does so out of many of the same fears that the USOC uses in justifying it’s strict enforcement of it’s marks.

To bring this discussion to a head, cease-and-desist letters are probably more a tool of necessity than an expression of corporate malice. While there may be the rare occasion of an “over-zealous summer associate” or two, the astronomical economic value associated with the trademarks of many of the worlds most famous brands provides ample incentive to stymie even the most negligible 3rd party uses, strong likelihood of confusion or not. This is because, like it or not, language is slippery, and far is the fall to “generic”.

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