Seattle Trademark Lawyer

This headline is what bugs me about the USOC: “USOC fights Olympian newspaper’s trademark.”

Now, what the Seattle Times means is the USOC is opposing McClatchy U.S.A. Inc.’s application to register its trademark, THE OLYMPIAN. The trademark it has used since Feb. 1, 1982.

The PTO ok’d it. But not the good ol’ USOC, which thinks that after 27 years, folks around here are prone to suddenly associating the paper’s name not with Olympia, Wash., where it is based, but with the Olympics. Gimme a break. 

Indeed, this mark would seem to fall squarely within the Ted Stevens Act’s exception for use of the word “Olympic” in commerce when “it is evident from the circumstances that such use … refers to the naturally occurring mountains or geographical region of the same name that were named prior to February 6, 1998, and not to the corporation or any Olympic activity,” and such use outside of the “State of Washington west of the Cascade Mountain range” is “not substantial.”

This is the name of Olympia’s newspaper, folks. This sort of thing could dampen my Olympic spirit.

The USOC apparently has more important things to worry about. Like protecting consumers against confusion. That’s what it argues in its Sept. 18 notice of opposition:

“Registration and use of Applicant’s Mark is likely to cause injury to Opposer’s business reputation and to injure and impair Opposer’s rights in its trademarks and service marks by causing confusion, mistake and/or deception as to the respective rights of the parties and as to the source of the goods and services offered by Applicant. In addition, any defect, failure or fault with respect to Applicant’s Goods provided under Applicant’s Mark would erode the valuable goodwill associated with Opposer and its Olympic Marks. Opposer will be harmed to a greater degree if Applicant’s Goods do not meet the strict quality standards consumers normally associate with the Olympic Games, namely, elite competition at the highest level.”

Like I said before, Give me a break.

The Olympian’s article on the dispute from today’s paper is here.

In January, Seattle- and Marysville, Wash.-based Alpine Mortgage Services, Inc., filed suit in the Western District against Lake Oswego, Ore.-based Alpine Mortgage, LLC, for trademark infringement and breach of a settlement agreement. 

Turns out, plaintiff sued the wrong “Alpine” entity, which led the defendant to deny liability and counterclaim seeking an award of attorney’s fees based on a prevailing-party clause in the parties’ settlement agreement. In June, after plaintiff settled with the proper “Alpine” entity, Judge Thomas Zilly granted plaintiff’s to dismiss its claims against the defendant but retained supplemental jurisdiction over defendant’s counterclaim.

It took three months, but the parties apparently worked out their dispute over fees. On Oct. 1, they filed a Stipulated Order of Dismissal dismissing all claims and counterclaims between them without an award of fees or costs to either party.

The case cite is Alpine Mortgage Services, Inc. v. Alpine Mortgage, LLC, No. 09-138 (W.D. Wash.).

Last week a reader asked if the U.S. Olympic Committee has filed the same number of trademark lawsuits in recent years that it has filed in the past. Interesting question. The federal courts’ PACER database only goes back to 1988 (as best I can tell). During that period, the USOC has filed 39 lawsuits. Its busiest year was 2002 (Winter Games in Salt Lake City) with seven suits, followed by five in 2000 (Summer Games in Sydney), and four in 1994 (Winter Games in Lillehammer). Here’s the breakdown:

1988 - 1          1989 - 0          1990 - 2          1991 - 0          1992 - 0

1993 - 0          1994 - 4          1995 - 3          1996 - 3          1997 - 0

1998 - 0          1999 - 1          2000 - 5          2001 - 3          2002 - 7

2003 - 2          2004 - 1          2005 - 1          2006 - 0          2007 - 3

2008 - 0          2009 - 3  

So, there hasn’t been a big spike in USOC trademark lawsuits in the last few years.

On another Olympic note, the USOC is the defendant in a suit filed last year in the Northern District of Illinois, Frayne v. USOC, No. 08-5290. In it, Stephen Frayne, Jr., owner of www.Chicago2016.com, seeks a declaratory judgment that registration of his domain name does not violate the Lanham Act or the Ted Stevens Act. His Web site states: “This is NOT the official Chicago 2016 Olympic Bid Committee site” and instead is a forum for “analysis by professional economists on the topic of hosting the Olympics.” The USOC, for its part, has asserted counterclaims for trademark infringement, cybersqutting, and violation of the Ted Stevens Act. (The USOC’s Chicago bid Web site is www.Chicago2016.org.) The USOC has moved for summary judgment, which is pending before the court.

Last Olympic post for a while, I promise. And I’m almost certain it’s the last time this year I’ll quote from Sports Illustrated. But here’s another gem from SI about the USOC’s ham-fisted efforts to enforce its rights to all things Olympic.

From its Dec. 5, 1994 issue:

“In its quest to bring home the gold, the U.S. Olympic Committee apparently believes it must send out several thousand letters every year implying that it will take legal action against businesses using, in their name or logo, the word Olympic or the interlocking rings, to which a 1978 federal law grants the USOC exclusive rights. This is a petty and merciless job, but the Lords of the Rings evidently feel somebody has to do it.”

Seattle doctor Dan Nelson, who at least in 1994 owned a practice called “Olympic Spinal Care,” summed up local sentiment toward the USOC’s enforcement efforts rather nicely: “‘The general provincial attitude around here is: Screw ‘em.’”

I’d say that’s still the sentiment in Seattle fifteen years later.

 A reporter put me onto an excellent Sports Illustrated article written during the 1988 Summer Games in Seoul. Author Leigh Montville writes about being “On the Trail of the O-Word,” in which he concludes that ”[d]espite official efforts to curb unsanctioned use of the word ‘Olympic,’” it is “here, there and everywhere.”

To illustrate his point, he riffs on “Olympic” names he comes across in everyday life: Olympic Burger and Burrito. Olympic Fish and Meat Market. Olympic Fruit and Vegetable. Olympic Bar B Que. Olympic Pawn Shop. Olympic Van Lines. His list goes on and on.

“Is there any fair-sized town that does not have an Olympic Diner somewhere on its outskirts?” he asks. “One Olympic Diner leads into two Olympic Realty offices, which lead into three Olympic Laundromats. There seem to be no boundaries. These Olympics are everywhere. Around the country. Around the world. The Olympic Diner of Abu Dhabi? The Olympic Diner of Beijing? The Olympic Diner of Moscow? Everywhere.”

Mr. Montville cites to an estimate that 40,000 Olympic-named businesses exist out there — almost all of which in my view are th result of an innocent failure to heed the Ted Stevens Olympic and Amateur Sports Act, 36 U.S.C. § 220506, which prohibits most commercial use of the word “Olympic” outside of Washington’s Olympic Peninsula after Sept. 21, 1950. 

The article goes on to say: “If the USOC owns the word, the USOC can do anything it wants with that word. ‘We got a letter saying that we couldn’t use the name,’” one business owner said. “‘Our attorney told us it would cost $50,000, minimum, to fight the case. I have been around enough lawyers to know how much ‘$50,000 minimum’ can become. We changed the name.’”

The USOC’s perspective? “‘We don’t go looking through telephone listings, no,’ says Richard Kline, chief legal adviser for the USOC. ‘But if someone brings something up to us, we’ll follow it up.’

“Off the record, USOC officials claim they have no interest in the Olympic taxidermies of the land. They mostly are interested in competitions or fund-raising ventures that try to use the name or the Olympic logo. This does not mean they don’t have the legal option to become interested. A threatening letter can arrive at any time. The comic opera always can be brought to the stage.”

Just so it’s clear, I’m all for the USOC enforcing its mark against competitions and businesses that try to trade on the Olympics’ goodwill. Unfortunately, it doesn’t stop there. If the USOC avoided the comic opera, I’d be its biggest fan.

The article cite is Leigh Montville, “On the Trail of the O-Word,” Sports Illustrated (Olympic Preview, Sept. 1988). I’m sorry to say I couldn’t find a publicly available copy to link to.