Another reason to hate World Triathlon Corporation.

Paul Hough

My wife received the following e-mail from her club President today.  This club has provided many volunteers over the last several years to the Ironman 70.3 World Championships in Clearwater.  So now, WTC pulls out of town and shafts the club.  I hope they struggle to find volunteers at Henderson.  To be nice, WTC is pond scum.  

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All - I have been known to say that there is not a day that goes by that people do not shock the hell out of me... And last week was no exception.  The Tampa Bay TriGals received a letter from a group of attorney's representing World Triathlon Corporation (Owner of Ironman brand) requesting (i.e. if you dont do this we will sue you) - that we cease and desist using the word "Iron" in our Iron Distance Challenge event name.  Apparently, the word "Iron" is trademarked in relation to a swim / bike / run event.  Yes - this is true -- you cant make this stuff up.

 

Therefore, In consulting our attorney, (thank you again Karen) we have chosen not to fight this and to comply with their request.  This being said, we are rebranding the event:  "The Censored Tri Distance Challenge" (or anyone have any other ideas?  We thought of using the Periodic table symbol for Iron "Fe" ) and will be changing all logos; marketing materials, etc.  While those of you who know me, can imagine my reaction to this... After a full blown bleeping temper tantrum, I realize the time and expense to fight this is not worth it -- knowing we will end up right back at this outcome. 

 

But, hey, it shows this event is On the Map!  As a club we are revisiting our volunteer and race activities, as we have been active participants in Ironman (not sure I am allowed to type it -- shhh dont tell) events.  All we ask of you is your continued support of our event -- As a group we have provided some awesome charities with much needed funds and really motivated peope to get off the couch in January... Thank You!!!   



 

 

Coach Rich

From experience, I can say that you name anything "iron" in the trispace at you peril. This is why anything that en has paid to produce (DVD, shirts, etc) say long course, not ironman. We're standing by to rename training plans, articles, etc

steveperx

Paul:

As an IP lawyer with 15 years experience, I can tell you that LEGALLY, WTC most likely cannot win that lawsuit. First, WTC does not own the word "Iron" in connection with triathlons or swim/bike/run events. They have several federal registrations that include the word "Iron", but they don't own the word "Iron". Second, even if they did, the term as used by the club probably meets the legal definition of "merely descriptive", which is a fair use of the term and is NOT trademark infringement. In other words, they are using the term to describe the race as opposed to identify the source of the race. I would think a disclaimer on any advertisement of the race stating that it is not affiliated with or associated with WTC would be sufficient to negate any potential for confusion.

Now, all that being said, I suppose WTC could still file for injunctive relief and make the club spend a lot of money. So the threat is still there. However, I don't believe they have a legal leg to stand on.

Also, you should be aware that from the corporation's perspective, the law requires they police the use of confusingly similar marks to avoid genericization of their mark. The word "Aspirin" used to be a trademark, but became generic after the owner failed to police the mark and allowed people to refer to all versions as "aspirin". WTC is sort of obligated to police the "Ironman" mark to avoid this. So, don't be TOO hard on them for this one. I bet that if your wife's club sent a letter back discussing the "fair use" issue and offering to include a disclaimer, WTC would back down. They just need it on record that they are policing the mark. I'd be willing to help ghost write a letter if they want.

Norton

Posted By Steve Perkins on 15 Jan 2011 09:10 AM

Paul:



As an IP lawyer with 15 years experience, I can tell you that LEGALLY, WTC most likely cannot win that lawsuit. First, WTC does not own the word "Iron" in connection with triathlons or swim/bike/run events. They have several federal registrations that include the word "Iron", but they don't own the word "Iron". Second, even if they did, the term as used by the club probably meets the legal definition of "merely descriptive", which is a fair use of the term and is NOT trademark infringement. In other words, they are using the term to describe the race as opposed to identify the source of the race. I would think a disclaimer on any advertisement of the race stating that it is not affiliated with or associated with WTC would be sufficient to negate any potential for confusion.



Now, all that being said, I suppose WTC could still file for injunctive relief and make the club spend a lot of money. So the threat is still there. However, I don't believe they have a legal leg to stand on.



Also, you should be aware that from the corporation's perspective, the law requires they police the use of confusingly similar marks to avoid genericization of their mark. The word "Aspirin" used to be a trademark, but became generic after the owner failed to police the mark and allowed people to refer to all versions as "aspirin". WTC is sort of obligated to police the "Ironman" mark to avoid this. So, don't be TOO hard on them for this one. I bet that if your wife's club sent a letter back discussing the "fair use" issue and offering to include a disclaimer, WTC would back down. They just need it on record that they are policing the mark. I'd be willing to help ghost write a letter if they want.

I LOVE having you guys on our side!

Paul Hough

There's a great article about the history of the Ironman trademark on Slowtwitch by Dan Empfield. It's been awhile since I read it but I think he said that they continually try to expand the application of the mark because beyond the race and the people who do Ironman there really is no "there" there. They had to come to agreement with Marvel Comics to use Ironman, and they M Dot logo had already been in use by a European company. I think WTC is extremely protective because they really don't own anything and are afraid of the consequences of any encroachment. I'm not sure, but their biggest income may be the M Dot logo on Timex watches.

Paul Hough

@ Steve - it's not even a race. The Iron Distance Challenge is a month long training competition that people enter as individuals or teams. The goal is to encourage training in January by seeing how many iron distance equivalents you can accumulate during the month. But you only score the lowest of any of the three events. So if ran the total equivalent of 7 marathons in January, biked 10 IMs worth of mileage and followed the EN protocol for swimming in the OS (ie., none) then your score is ZERO. It raises money for the club and for charity. The winning man and woman get a nominal prize worth maybe $25, and the right to designate a $500 gift to the charity of their choice. And this bothers WTC???!!! It's just a smack in the face of a club that has supported WTC with many volunteers and in no way competes with them. I've suggested to the president that at a minimum they ought to contact one of the local papers to publish an embarrassing story on WTC...a local company that doesn't support the community in any way. I've never seen WTC sponsorship of local races, bike tours, or anything. Just about any local bike shop does more.

Dan Socie

Iron Distance is a massive stretch from Ironman®

I would also post the letter from their lawyers on the website and let everyone know you are being bullied but a big corporation and being forced to change the name of your charity event.

jburbatt

Unfortunately, this happens way too often. In policing their marks, big entities don't consider any alternative but cease and desist, which is sad when you consider the small clubs and groups they are bullying. The Komen foundation was just written about re: this http://www.huffingtonpost.com/2010/12/07/komen-foundation-charities-cure_n_793176.html?ref=fb&src=sp

Paul Hough

Jennifer- very interesting article. My wife and I have given to Komen for a number of years but stopped in 2010 as we got the feeling that they are just a money machine that is not managing its funds as well as they could. Given they are spending over a $1M a year protecting over 200 marks (over 200!!), they are now permanently off my list.

Linda Patch

Fascinating.

If you can get lawyers to pro bono write a letter on your behalf to WTC, I'd do it. If nothing else, it will snag up their lawyer's time and make them spend legal fees to respond. Passive aggressive, but I'd try and be a thorn (albeit small) in their side.

 

 

Scott Alexander

And I'd provide each and every one of us with a copy, so we can make it go viral, like the whole Ironman Access crap.

William Jenks

I'm not a lawyer, but I think Steve is right. They are forced into CYA Cease and Desist letters for when they DO want to protect their name from someone.

That said, I wish they were more creative and didn't act like such gorillas. Couldn't they come to you with a letter that was a Cease and Desist, but oh, yeah, here are some remedies that will put you into Fair Use? Steve, would that undermine the whole exercise for WTC to write them a letter insisting on a "we are not affiliated with..." disclaimer and/or provide a couple of examples they knew of that were Fair Use?

If they go too far in this, they run the risk that we all talk about "Long Course Triathlon" and they lose identity with the product...so it's in their interest to almost generify the word, I'd think.

redmann

So, the Door County Half-Iron name will be forced to change or face costly litigation? There must be hundreds of examples like this. Sad...

Kevin Walter

I thought there was a decision on this issue a few years ago that triathlons could call themselves "Iron distance" or "Half-Iron distance" legally as a descriptive term as Steve suggested, but that they couldn't use the word "Ironman"

steveperx

They had to come to agreement with Marvel Comics to use Ironman, and they M Dot logo had already been in use by a European company.

Yeah.  I've talked with Dan about that.  That's not exactly true.  They did execute a license with Marvel, but I suspect that was because, in the early days, they were in the same position as the Tri club that is the subject of the OP.  They couldn't afford to litigate and despite having a good case, decided to settle out of court.  I'd also bet they intended to use the mark in ways that wouldn't have been so clear cut.

Paul Hough

@ Steve - isn't it true that if Ironman became synonomous with completion of any 140.6 mile  triathlon that WTC could lose it's trademark?   My understanding is that generic names can't be trademarked and companies have lost their name when it became synomous with the subject at hand.   If true, as customers, we should refer to all long course triathlons = 140.6 miles as Ironman (WTC or not) to hasten the demise of the trademark.

Michele Cellai

Posted By Paul Hough on 20 Jan 2011 08:25 PM

@ Steve - isn't it true that if Ironman became synonomous with completion of any 140.6 mile  triathlon that WTC could lose it's trademark?   My understanding is that generic names can't be trademarked and companies have lost their name when it became synomous with the subject at hand.   If true, as customers, we should refer to all long course triathlons = 140.6 miles as Ironman (WTC or not) to hasten the demise of the trademark.

I like this idea!!!!

Scott Alexander

Posted By Michele Cellai on 21 Jan 2011 11:32 AM

Posted By Paul Hough on 20 Jan 2011 08:25 PM

@ Steve - isn't it true that if Ironman became synonomous with completion of any 140.6 mile  triathlon that WTC could lose it's trademark?   My understanding is that generic names can't be trademarked and companies have lost their name when it became synomous with the subject at hand.   If true, as customers, we should refer to all long course triathlons = 140.6 miles as Ironman (WTC or not) to hasten the demise of the trademark.

I like this idea!!!!

Yep, like kleenex, xerox, saran wrap, etc. Those all used to be copyrighted brand names, but they're generic-enough terms these days, that they're used everywhere!



 

steveperx

@ Steve - isn't it true that if Ironman became synonomous with completion of any 140.6 mile  triathlon that WTC could lose it's trademark?   My understanding is that generic names can't be trademarked and companies have lost their name when it became synomous with the subject at hand.   If true, as customers, we should refer to all long course triathlons = 140.6 miles as Ironman (WTC or not) to hasten the demise of the trademark.

Well... yes and no.  It's already trademarked.  The whole reason they send these letters is to show their efforts to prevent genericization of the mark.  A court would have to find that despite these efforts, the word has become generic, which is unlikely.  That said, there's no reason you can't refer to all 140.6 races as generic "ironman" races.

Paul Hough

Just my opinion, but I think M Dot is already generic. There are a lot of people who get M dot tats after having completed a non-branded 140.6 tri. I think most see the logo as the mark of having gone that distance, not the logo of WTC. The courts may not agree, but folks who get the tattoo without ever having done a WTC IM are making a strong statement otherwise.

Coach Rich

Steve,

Let's engage in a hypothetical. What would happen if WTC wrote PnI a letter telling us we are in trademark violation with the names our training plans (Ironman used many times, on all of them)...but we just didn't respond. We didn't change the name, didn't answer their letter, etc?

How would it play out? I ask because I've had just that happen 3 times, that I can remember. Back in the day I received letter from WTC for:

• Names of training plans: I just changed the name to long course.
• Titles of a couple articles: same
• Names of training camps: got some flack for my "Ironman Wisconsin Training Camp," change the name to Crucible Fitness Training Camp: Madison, WI
• IronCamp, RnP venture. Of course, they contacted us after we had jerseys made, etc. We just took down the webpage as we had already moved in another direction.

steveperx

Rich:

It really depends on how badly WTC wants you to stop using the mark and whether theybreally think there's a misuse of their mark. That's going to depend on exactly how you're using the mark. If the plans are named and promoted as "Ironman Wisconsin Training Plan" or something similar, then they might fight harder. If it's called "EN Training Plan for Ironman Wisconsin" then I'd argue that's a fair use of the mark. Same for the articles, except that I'd think their arguments with the articles is even weaker.

Same for camps. I can see their argument for "Ironman Wisconsin Training Camp". Something like "EN Training Camp for Ironman Wisconsin" along with an approptiate disclaimer on any promotional material would probably keep you fairly well insulated from any real liability.

IronCamp is pretty lame, particularly if you're not using the MDot logo and/or are including a disclaimer.

I suppose the short answer is that you ignore them at your own peril. My guess would be that if you have a good fair use argument or a good argument that there is really no likelihood of confusion, you could probably ignore them and they wouldn't do anything. I would advise anyone who receives such a letter to get good legal advice as to the potential liability and then either cease the "offending" behavior or write back outlining why there is no issue with trademark infringement. You may be able to convince them there is no issue or negotiate a mutually agreeable solution.

Coach Rich

Steve,

Thanks for the details. Now you have me thinking about how much fun it would be to provoke WTC and share the conversations in here with the Team .

That said, aside from PnI almost getting tossed into the WTC wagon by the MDot thugs at IMLou and WI this year, we haven't had a love letter from them in about 4yrs. Sniff.

murphy.m.j

Posted By Rich Strauss on 24 Jan 2011 12:41 PM

Steve,

Thanks for the details. Now you have me thinking about how much fun it would be to provoke WTC and share the conversations in here with the Team .

That said, aside from PnI almost getting tossed into the WTC wagon by the MDot thugs at IMLou and WI this year, we haven't had a love letter from them in about 4yrs. Sniff.

To be more on your side Rich, if a company like EN does not stick up for itself and how they are not going down the road using the Ironman trademark, then you and all others EN-type-companies will be at the mercy of the mega-lawyers of WTC and allow them to do whatever as often as they want.

I know its nothing to joke about with all the lawyer expense but there is also your business and others which cowel when WTC does what they preceive to do. WTC is obviously wanting to patent the word Triathlon in addition to just Ironman.

Last point, this is my 1st ironman, I am totally scared to-all-dodo about even starting this event; i never though i would go down this road at all, but now that I have made the commitment, I will do my best to finish with the best training I can come up with; you people at EN.  EN people have totally encouraged me to do this event even as i work to do they OutSeason plan in the winter months.

I have completed 2 marathons, 2 HIM's and know that this distance is alot harder then all 4 events before put together. BUT with EN I will finish and probably brag about it for the rest of my life.

God willing, I will start the event and that is all I can really control as after the gun goes off its anyone's guess what can happen.

I would encourage EN management to practice what they preach;  make a class-action lawsuit on behalf of the triathlon industry and how WTC is blocking growth and acting in a monopoly fashion.  At least file a complaint saying what the issues are.

Good luck in whatever you decide, I am sure that changing names, etc is not a very desireable thing to do just so your business does not go bankrupt due to lawyer fees.