Confusingly Similar? Don’t Make Me L.A.F.

by Downs Rachlin Martin PLLC
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[author: Jamie Fitzgerald]

August 28, 2011

I Am Vermont Strong logoWhen Hurricane Irene’s floodwaters savagely inundated central and southern Vermont on August 28, 2011, native Vermonters Eric Mallette and Lyz Tomsuden were inspired to create the battle cry “I Am Vermont Strong,” depicting it on a silhouette of the state. Moving as precipitately as the storm, they arranged to incorporate I Am Vermont Strong, Inc. (“IAVS”), and were selling I AM VERMONT STRONG T-shirts by the very next day. Their mission was to raise funds for Vermont disaster relief organizations, with 100% of profits from the sale of the T-shirts dedicated to recovery efforts. Demand for the shirt was overwhelming, especially on Facebook. I AM VERMONT STRONG, with its empowering message of resilience, went viral – so viral that copycats quickly surfaced. It was at that point that I got involved.

Over a year later, there is still widespread evidence of the havoc that Irene wreaked on that single day. Unlike the hurricane, however, I AM VERMONT STRONG’s power remains undiminished. The State of Vermont has even licensed the design for an enormously popular vehicle license plate, greatly augmenting the recovery fund coffers.

Enter LIVESTRONG

What does this prologue have to do with America’s fallen hero Lance Armstrong? Think of it as a footnote in the special Lance Armstrong Edition of The Emperor’s New Clothes. Here is the story.

On September 26, 2011, IAVS applied to register the slogan I AM VERMONT STRONG (without the design) as a federal service mark for “charitable fundraising to support disaster relief organizations.” The mark is now registered, no thanks to the Lance Armstrong Foundation (LAF), from which Armstrong was so ignominiously ousted recently. LAF threatened to oppose the registration of I AM VERMONT STRONG, alleging likelihood of confusion with LAF’s registered trademark LIVESTRONG. By securing an extension of time in which to file an opposition to the registration of I AM VERMONT STRONG, LAF held the IAVS application hostage for over three months.

Then, in a breathtaking act of chutzpah, only a few days before the opposition deadline I received a letter from LAF asserting that IAVS’s charitable fundraising services to support disaster relief organizations are “virtually identical” to LAF’s fundraising for, inter alia, cancer research and lobbying efforts in the field of cancer recovery and survival. Granted, getting cancer is a disaster, but not the kind that would find relief through IAVS’s fundraising efforts.

Even more preposterously, LAF claimed that “the phrase I AM VERMONT STRONG is similar to LAF’s LIVESTRONG mark,” as though saying so would make it so. In support for this remarkable position, LAF’s lawyer set out the following graphic comparison:

LiveStrong graphic compared to I Am Vermont Strong graphicNot exactly convincing. It takes no IP expertise to see that the likelihood of confusion between these marks, visually or verbally, is nugatory.

And what did LAF “respectfully request” from IAVS to get LAF off its back? Just a simple if novel agreement never to engage in seven enumerated acts – acts in which IAVS had never engaged in the first place nor given any indication of engaging in in the future. For instance, LAF wanted IAVS to agree that it would never use VERMONTSTRONG as one word. Well, of course not — why would it? But LAF had no more right to extract such a written undertaking from IAVS than IAVS would have to demand that LAF never use AMSTRONG. LAF also expected IAVS never to make I AM VERMONT STRONG wristbands.

I confess that I was apoplectic at the hubris of these ostensibly respectful “requests.” According to its website, LAF’s mission is “…to inspire and empower people affected by cancer.” I found myself “inspired and empowered” as well — to tell LAF in no uncertain terms that it had picked on the wrong 90-pound weakling.

Trademark Policing v. Trademark Bullying

I have practiced trademark law for over thirty years, getting my introduction to IP at Playboy Enterprises. One day we received a letter from two Marines who complained about the lousy food and the absence of live Playmates at one of the Playboy Clubs — what turned out to be a roadside joint called “The Playboy Club” in rural Michigan. I was assigned to send a cease and desist letter advising the owner that he could not call his place The Playboy Club, especially when its décor comprised artfully thumb-tacked Playboy centerfolds. The bar owner called me to protest: “But they call me ‘The Playboy’ around here!” I was not in a position to question my assignment back then, but now I would certainly resolve the situation without threatening the poor guy with all the civil and criminal sanctions the law would provide.

Still, that is a perfectly proper example of policing of one’s mark. Playboy might have chosen to ignore “The Playboy” and his “Playboy Club” roadhouse because it was so far below the radar, and had little potential to damage the vast goodwill enjoyed by the PLAYBOY mark. Nonetheless, any trademark owner must constantly monitor its marks, especially invaluable famous ones, if it wishes to maintain control of its mark and the goodwill it symbolizes. In the situation I’ve described, the mark was identical, those Marines were confused, and Playboy’s concern was absolutely warranted. That is legitimate trademark policing.

One should never shrink from acting forcefully when a client’s mark is infringed, willfully or not, by a mark that is identical or substantially indistinguishable, and where potential damage to the client is imminent and substantial. At the same time, however, when a client brings a perceived infringement to my attention, I do not hesitate to advise against breaking out the big guns if in my judgment there is no likelihood of confusion. It is not just a question of whether the client would prevail. One must ask, is there really a basis in fact and law for this demand? If not, aggressive action is trademark bullying, not trademark policing.

Other Signs of LAF’s Trademark Bullying

Which brings me back to LAF v. IAVS. The letter from LAF concerning I AM VERMONT STRONG is not a one-off. I took a look at Trademark Trial and Appeal Board (“TTAB”) records to determine whether LAF makes a habit of pursuing applications to register marks containing the word STRONG and lo! — 245 proceeding captions on ten fine-print pages speak for themselves. Indeed, LAF is widely recognized as a trademark bully (#2 in 2011.)

Armstrong was made personally aware via Twitter of the threatening letters coming from LAF’s law firm at least as early as January, 2012, according to The Daily Beast. A young woman who applied to register the slogan LIVE THE BEAUTY OF BEING STRONG for T-shirts was being attacked by LAF for using the words “live” and “strong” in her mark. How ridiculous. The eponymous 7-time Tour de France champion is said to have replied that this was the first he had heard of the threats being made by LAF. Even if that were true, and it might well be, ignorance was no excuse for tolerating trademark bullying in his name. It is unknown whether he ever followed up with LAF.

The money LAF invests in pursuing these perceived threats to the LIVESTRONG mark is no secret either. According to The Daily Beast article cited above, in 2010 alone LAF spent nearly half a million dollars pursuing real and imagined trademark infringements worldwide. (One can’t help speculating whether those fees might have been more usefully invested in cancer programs). Judging by the TTAB record, a good portion of those fees must have been incurred in the U.S. with indiscriminate threats to oppose a wide variety of “STRONG” marks, followed up by requests for cooperation that sound more like offers one shouldn’t refuse.

In any event, I decided not to reply to the letter in the few days remaining before LAF’s deadline to oppose. It never did oppose. Only later did I reply, to advise LAF that IAVS would not be “cooperating,” and that it declined to make those seven promises. I did make one concession on behalf of IAVS in my reply, though, one that LAF didn’t even demand: I assured LAF that should it ever seek to register STRONGARM, IAVS will not oppose in spite of its obvious similarity to I AM VERMONT STRONG. STRONGARM might well be refused on grounds of descriptiveness anyway. I received no response; didn’t really expect one.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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