USATF stamps out a grave threat: masterstrack.com T-shirt
Cease-and-desist letter
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Curses! USATF has foiled my nefarious plan for total world domination! My first step was cornering the market on track T-shirts. Soon I’d 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 — delivered to my top-secret email address. The letter began: “USA Track & Field (USATF) has become aware that MastersTrack.com is engaging in the unauthorized commercial use of USATF’s intellectual property by selling apparel bearing the name “USA Masters Track & Field.” Oh my god! Someone had discovered my neatly disguised store. I read on: “Please 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.”
Both say “USA” and “track & field.” 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.”
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 USATF’s logo and name from your apparel, website and marketing materials immediately.
I need some clarification. I’m not using the USATF logo or trademarked or copyrighted name on any masterstrack.com apparel. How is “USA Masters Track & Field” an unauthorized use of “USATF”? “Track and field” refers to a sport. “Masters track and field” is a category of that sport. Certainly the country name isn’t 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 “certainly the country name isn’t an issue” is not correct. You would not, for example, be at liberty to market your service or merchandise by using the phrase “Track and Field–USA” without infringing USATF’s intellectual property rights. Simply put, your use of the phrase “USA Masters Track & Field” falsely and confusingly suggests to the public an association between your organization and the sport’s national governing body that does not exist. Thus, such use violates USATF’s rights. If you have any additional questions, let me know.
But I did get advice from legally connected friends. Their first piece of advice: Get a lawyer.
You’re not using USATF’s logo, so that part of the letter certainly is baloney.
A search of the U.S. Patent & Trademark Office’s online Trademark Electronic Search System brings up a number of live trademarks and service marks registered by USATF.Interestingly, most of them include a variant of the following disclaimer: “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘USA’ and ‘TRACK AND FIELD’ APART FROM THE MARK AS SHOWN.” (Some just mention “USA,” and some say “‘USA’ or ‘TRACK AND FIELD.'”). (See this screen grab.)
You can do your own search: go to http://www.uspto.gov/; follow the “How to Search” hyperlink; then follow the “Search Trademarks Now” hyperlink; then use the “New User Form Search (Basic).”
So your intuitive response to the letter appears to match what USATF believed when it sought to register its marks: USATF can’t (and doesn’t) claim exclusive rights to “USA” and/or “Track & Field.” Seems like it would be difficult for USATF to have any success arguing that the insertion of an additional word it hasn’t registered (“Masters”) between two terms it doesn’t claim to own somehow creates a mark that it does own.
13 Responses
Ken – got some of those banned shirts in stock? As a card carrying member of the ACLU – I am a strong supporter of those who have had stuff banned – books, speech, and now your T-shirt.
I am happy to take one – size S – off your hands – will pay postage and handling too – and throw in a goodwill offering to the cause of Masters Track And Field .- after all cannot let those shirts just go to dumpster.
Sheeze – get real USATF – go promote masters track and field rather than dumping on Ken’s t-shirts.
I’ll take one, too (size L).
Does this mean I can now sell T-shirts with “USA Masters Track & Field” on my site? Because if so, then my whole plot to get you to stop selling them on your site so that I can steal the market has paid off!
Since the T-shirts you have are illegal contraband anyway, I’d be happy to take them off your hands … for a small price, of course.
Seriously, Ken, tell them to stick it where the copyright don’t shine.
Anyone interested in an item may write me privately: TrackCEO@aol.com
I wonder if USA Masteturds T&F would be OK?
Ken, In my non-legal opinion that USATF’s assertion is tenuous at best.
That said, having been on and winning both sides of copyright/trademark infringement lawsuits, I can testify that even when you win you lose.
USATF should be told where to stick it. You are not infringing on their brand or trademark.
With all due respect to your graphic design skills, no-one could think you were trying to exploit their intellectual property.
If Lamont thinks his organization has exclusive use of the words USA and track & field, he perhaps should check out the AAU track and field merchandise – which includes the terms ‘USA’, and ‘track & field’.
This reminds me of what happened to local talk show hosts here in Portland Oregon last year.
Mark and Dave at 1190 KEX set up a website named “Sam Adams For Mayor”. They were going to give it to our current mayor Sam Adams who was running for mayor at the time.
Well, they got the same letter as you did from Sam Adams beer telling them to cease and desist. They were finally able to work it out since there was an actual person with the name running for mayor. They ended up auctioning off the letter for charity.
The one on the right has a larger neck to fit big heads….
“intellectual property rights”…. get a life Lamont.
I routinely delete any e-mails from USATF that are selling anything. I will never buy an “official” piece of apparel from an organization that would be so lame. While competing at nationals this year I will be sure to wear a hand lettered T-shirt offering some specific non-legal advice to the USATF’s legal counsel.
I take it USATF stands for Unctuous Stuffy Anal-retentive Track and Field? Good grief.
I’ll take a size medium. Or maybe I’d rather have one from another country since we continue to become less and less “the land of the free”.
KP
Latest example of USATF overreach:
http://www.trackandfieldnews.com/discussion/viewtopic.php?f=1&t=53850
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