Trademark Issues in Ultrarunning

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(The following is a cross-post from my ultrarunning blog.)

The organizers of the “Grand Slam of Ultrarunning” have invented a new controversy in the last week. I’m a lawyer and an ultrarunner (retired), so I’ve gotten some emails asking my opinion on the subject.

Before I begin, here’s what the organizers are saying:

The Grand Slam of Ultrarunning™ Committee and the Wasatch Front 100 Mile Endurance Run Committee do not endorse, recognize, or ratify anyone or their times involved in the so-called “unofficial” grand slam of ultrarunning. Likewise we do not support, encourage, or sustain anyone involved in this pursuit.

We continue to recognize, applaud, and award the runners who are legitimately registered in and officially complete The Grand Slam of Ultrarunning™.

We also remind all who are observing or otherwise involved that the term “Grand Slam of Ultrarunning™” is a trademark of The Grand Slam of Ultrarunning™ entity, and only those who are official entrants and finishers of The Grand Slam of Ultrarunning™ are entitled to use the term “Grand Slam of Ultrarunning™” in whatever form (including in any form that might cause trademark confusion) in connection with their running endeavors.

The site was updated on 8/30/2013. I can’t be certain, but I have a strong feeling the new ™ language is a direct jab at Nick Clark, who is running the four races that comprise the slam without paying Steve Baugh an additional $80 so that he can get a trophy and be recognized by Steve Baugh. Nick Clark, along with Ian Sharman, is one of two men who will likely break the record for the fastest man to run those four races in one summer. We can guess that Mr. Baugh doesn’t like the idea that a potential record holder would circumvent the registration process he created for the event. Thus, the controversy.

Some trademark basics:

First, if someone uses the ™ symbol, that means that they are asserting common law trademark rights or that they plan to register a federal trademark in the future. If someone uses the ® symbol, that means they already possess a registered federal trademark. Given that Mr. Baugh not used the ® symbol, we can assume that no official (federal) agency has yet recognized any trademark right to this name. Nor was I able to find a registered state trademark in Utah. To my knowledge, the only official filing on record is a “dba filing” under Steven Baugh’s name with the Utah Secretary of State from October of last year. So there is no “Grand Slam of Ultrarunning Entity.” It’s just a name under which Steve Baugh does business.

As of now, Mr. Baugh is merely asserting that he has a trademark to the “Grand Slam” name. Most likely, no state or federal agency has yet confirmed such a claim.

What does all that mean? Basically, without federal or state registration, Baugh has very limited enforcement rights under common law trademark principles. What’s more, until last week, it’s unclear whether anyone even knew that there was anyone who cared to enforce this purported trademark (not registered locally or federally). That’s certainly the consensus from the comments in this article. That’s another strong argument against his ability to enforce such a right.

Second, even if Mr. Baugh does have a trademark right to assert, he still cannot prevent “nominative” uses of the trademarked name.

What’s a nominative use?

The most famous case on this subject is Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992). Basically, in this case, the New Kids on the Block sued USA Today for having a poll that asked readers who their favorite “New Kid” was (clearly Donnie, in my case). The New Kids said that USA Today was profiting on their trademarked name. According to the court, “[i]t is no more reasonably possible . . . to refer to the New Kids as an entity than it is to refer to the Chicago Bulls, Volkswagens or the Boston Marathon without using the trademark.” In the end, the court decided that using the New Kids name in the poll was permissible use.

The court applied the following standard to determine what is permissible use when using someone’s trademarked name:

“First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service, and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” Id.

First, the Grand Slam isn’t readily identifiable by any other name. Second, everyone uses it to describe the achievement of running those four races, nothing more. Third, I don’t think anyone is implying that Nick Clark has received sponsorship or endorsement by Steve Baugh. Nor do I think anyone cares. He’s made clear he believes the opposite.

In conclusion, at present, the Grand Slam of Ultrarunning has no official state or federal trademark protection. Mr. Baugh may have some very limited rights under common law trademark because of prior use, but, even if we were to assume for the sake of argument that he does have common law rights, he almost certainly can’t prevent people from talking about, discussing, or referring directly to the “Grand Slam of Ultrarunning” as a way to describe those races. He can only prevent people from using the name to promote races or imply sponsorship or endorsement when none exists.

In the end, Steve Baugh wants to preserve his role in the “Grand Slam” series. But it’s unclear what he might hope to achieve by engaging in this kind of aggressive territorial behavior, other than generating dissent and disagreement. You can claim you own the trademark to the award for running those four races. That may or may not be the case. But you can’t hope to claim ownership of the experience or the community’s desire to recognize that accomplishment. Any such pretension is small-minded and petty.

And that’s all I have to say about that.

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