Intellectual Property Law

Despite Sending Many Letters, the USOC Has Only Brought Three Suits Since 2008

By Michael Atkins

For all of the reasons discussed here, here, and here, STL has not been a fan of the United States Olympic Committee’s efforts to enforce its near monopoly rights in the U.S. over commercial use of the word “Olympic.” Is anyone really going to think the “Olympic Pizzeria” that exists in almost every town has anything to do with the Olympic Games? Nonetheless, the USOC hasn’t appeared to hesitate to dash off cease-and-desist letters to the owners of such establishments, sometimes causing small businesses to go through the expensive and disruptive process of changing their name. That’s particularly painful around here, where hundreds of companies (500 by this business owner’s count) have taken the name of the Olympic Peninsula, the Olympic Mountains, and Olympic National Park as their own.

That said, the USOC has been much more circumspect about filing suit. I found it surprising to learn it has only brought three trademark suits since 2008 (and never in Washington), even though the Winter Olympics will begin in about four months in Vancouver, BC, just 200 miles north of Olympia. Here’s a rundown of the USOC’s most recent suits:

• USOC v. Official Ticket Ltd., Dist. of Arizona - USOC sued ticket seller that allegedly used USOC’s OLYMPIC and BEIJING 2008 marks to resell tickets to the 2008 Summer Games without the USOC’s authorization. Complaint filed July 22, 2008; Order of default entered on August 24, 2009.
• USOC v. Asics America Corp., Central Dist. of Calif. - USOC sued shoe seller for allegedly using “OLYMPICS” prominently in advertising its athletic shoes, including in the statement, “You Wear the Medals. We Wear the Pride.” Complaint filed May 9, 2008; Stipulation of dismissal without prejudice filed on February 27, 2009.
• USOC v. Olympic Supply, Inc., Dist. of Maryland - USOC sued over defendant’s alleged use of OLYMPIC NEWS in connection with its newsstand and concession business. Complaint filed Feb. 25, 2008; motion for summary judgment granted in favor of USOC; permanent injunction entered on Aug. 6, 2009, enjoining defendant’s use of OLYMPIC NEWS beginning Jan. 11, 2010. 

Of these, the most hotly contested was USOC v. Olympic Supply. Interestingly, the court denied Olympic Supply’s motion for summary judgment based on laches, finding that registration of a corporate name did not serve as constructive notice to the USOC that the USOC’s mark was being used:

“In order for Plaintiff to be chargeable with constructive knowledge merely from the corporate registration, Defendant has to prove that a reasonable organization would routinely check every state’s corporate registrations on a regular basis to search for improper use of its marks. There are no facts stated that would give rise to such an onerous burden. Although the USOC has ‘a duty to protect and preserve [its] trademark assets through vigilant policing and appropriate acts of enforcement,’ mere corporate registration, without open and obvious use of the name, would hardly justify the level of vigilance suggested by Defendant’s assertion of this defense.”

I’m pleased the court included the caveat about “open and obvious use of the name.” Assuming a business has used OLYMPIC as its name openly and obviously for a period of years, I would think laches would provide a good defense. I’m even more pleased that the USOC is more judicious about bringing suit than it appears to be about sending cease-and-desist letters.

Full post as published by Seattle Trademark Lawyer on September 21, 2009 (boomark / email).