Where, What, and How – Trademarks & the Olympic Games (Part 1)

Part 1: WHERE

Like the rest of the world, we will have our eye on Paris this summer, breaking down trademark issues associated with the Olympic Games in a three-part series. Over the course of the next three months, we will review the where, what, and how: from where the U.S. Olympic Committee (USOC) derives its trademark rights, what it considers those rights to be, and how the Committee has enforced its rights against third parties. By the time the August edition is released, we may have a current dispute to discuss!

The Lanham Act

The Lanham Act (15 U.S.C. § 1051) is the primary federal trademark statute that governs trademark rights in the United States, and gives entities and individuals (including the USOC) the right to take action against third parties’ use of infringing marks. This Act also sets forth the requirements that marks must meet in order to be registrable on the Principal and Supplemental Registers through the U.S. Patent and Trademark Office (USPTO). Though the USOC derives its rights from legislation and case law beyond the Lanham Act, it also protects its rights via the same federal registration mechanism as any brand owner—based on our search of USPTO records, the USOC currently owns 180 live pending applications and registrations.

Ted Stevens Olympic and Amateur Sports Act

The Amateur Sports Act of 1978, also known as the Ted Stevens Act, established the USOC, and gave it exclusive rights to a variety of names, seals, emblems, and badges (and any combination thereof)—we will review those specific rights next month. The Act also gave the USOC power to license its marks to others, “to advertise that the contributions, goods, or services were donated or supplied to, or approved, selected, or used by” parties associated with the Committee. Enforcement powers were also granted to the USOC, allowing the Committee to take civil action against any person who “uses [its marks] for the purpose of trade, to induce the sale of any goods or services, or to promote any theatrical exhibition, athletic performance, or competition” without express permission. This scope goes beyond the rights provided by the Lanham Act, and provides the USOC with extraordinary enforcement rights.

Interestingly, there are a few carve-outs in the Ted Stevens Act. One allows any person who used the USOC’s names, seals, emblems, or badges for any lawful purpose prior to September 21, 1950, to continue that use. A revision made to the Act also explicitly allows use of the term “Olympic” by parties clearly referring to the Olympic Mountains in Washington State.

San Francisco Arts & Athletics, Inc. v. United States Olympic Committee, 483 U.S. 522 (1987)

The Ted Stevens Act was put to the test in 1987, when a group called San Francisco Arts & Athletics, Inc. argued that it should be permitted to use the term “Olympic” when promoting a sports event called the Gay Olympic Games. The two major arguments considered by the Court were (1) whether there was a likelihood of confusion between the group’s use of the term “Olympic” and the Olympic Games, and (2) whether the prohibition on use of the term “Olympic” was a violation of the group’s First Amendment right to free speech.

The Supreme Court confirmed the USOC’s right to enforce its rights in its marks, including the mark OLYMPIC, finding that there was no likelihood of confusion requirement under the Ted Stevens Act for the USOC to enforce its rights. The First Amendment argument was rejected as well, because prohibiting use of the word “Olympics” as the name of the event did not prevent the sports group from conveying its message—it could (and did) hold its event under a different name.

The fact that the USOC does not have to prove a likelihood of confusion to enforce its trademark rights provides it with a tremendous amount of power, both with respect to enforcement and licensing. As a licensor, the Committee can provide guarantees to licensees beyond what a regular entity can provide, which creates an interesting marketing landscape. We are likely to see that play out over the next few months—stay tuned!