On April 30th, the Boston Athletic Association, the non-profit that puts on the Boston Marathon®, filed suit against CafePress.com and Zazzle.com, as well as ten John Does, for a litany of offenses that basically boil down to trademark infringement and unfair competition. The BAA’s gripe is that CafePress and Zazzle allowed their users to create and upload designs that infringed on the BAA’s marks. Those infringing designs were then sold to other users on various items such as t-shirts, mugs, and stickers.
This suit has been met with some amount of populist outrage, outrage that I fully understand, and which was in fact my gut reaction as well. After all, the BAA and the Boston Marathon have been around forever, they’re seen as a big and strong corporate entity, and it looks like they’re trying to use their size to crush a few well-meaning individuals with a bogus lawsuit. Unfortunately, I think this is an open and shut case in favor of the BAA and, if I were their attorney, I would have filed it as well.
In order to really understand this lawsuit it’s important to understand a little bit about the law of trademarks. To begin with, the modern law of trademarks and unfair competition rests upon the understanding that all businesses are built upon reputation. The law further recognizes that reputation and the resulting market presence are incredibly difficult, incredibly time consuming, and incredibly expensive to build. As such, the law of trademarks, in many ways, is set up to protect the good faith investment of one business from the bad faith attempts of another business to make money off of that investment. In other words, trademark law says that you should be able to profit off of your own effort, and others should not.
The way a business communicates its reputation to the world is its mark. It’s the name, the phrase, or the symbol that the consumer associates with a particular business or product.
In order for a mark to be eligible for trademark protection under either the federal registration system or the common law, it has to be distinctive. This means exactly what it sounds like, the mark can’t look too much like a mark belonging to somebody else and can’t be overly generic. As part of the requirement of distinctiveness, there is also a prohibition against marks that are primarily descriptive. In essence, your mark can’t just be a generic description of the product, because that would unfairly block competitors from being able to adequately describe their products. By way of example, if I were a farmer growing and selling green grapes, I couldn’t register a trademark for the name “Green Grapes,” nor could I prevent my competitors from using “Green Grapes” in the description of their own grapes.
As I said above, there is a prohibition against marks that are primarily descriptive. However, even a descriptive mark may become eligible for trademark protection if it acquires secondary meaning. An otherwise descriptive mark acquires secondary meaning when it comes to be known in a particular market that the descriptive mark identifies a specific product of a specific origin. As such, a mark has to be in use in a market for a period of time before it can acquire secondary meaning. To continue my grape example, if my family has been selling grapes for 50 years under the “Green Grape” name, and it has gotten to the point where everyone in the greater Boston area thinks of only my grapes when they hear the phrase “Green Grape,” then it’s likely that the mark has acquired secondary meaning and is eligible for trademark protection. This cuts the other way as well though. A mark that has acquired secondary meaning may, over time, lose that secondary meaning as the market changes, and the holder of that mark may therefore lose the right to prohibit others from using it once it becomes generic again.
So how does all of this apply to the BAA? Well, Boston Marathon is clearly a descriptive mark, since it just states the type of event and its location. As such, it had to acquire secondary meaning in the marketplace before it could be eligible for trademark protection. I don’t think that there can be reasonable disagreement as to whether or not the words Boston Marathon have acquired secondary meaning, when you hear them there’s only one event you think of. The U.S. Patent and Trademark Office seems to agree, which is why the BAA was allowed to register the trademark.
The problem with the Boston Marathon trademark though, is exactly that it’s built upon secondary meaning. As such, that secondary meaning can be lost and the term can become generic again, depriving the BAA of any trademark protection. Trademarks become generic terms when the trademark owners allow them to be used in the marketplace as general descriptors. This may sound ridiculous in the context of the Boston Marathon, because there are no current competitors, but the market can always change. The BAA has been around for 100 years and no doubt intends to be around for at least 100 more, so failing to protect their mark now because of a lack of competition on the immediate horizon would be short-sighted and ill-advised. After all, plenty of products that were once the only game in town have since seen their trademarks become generic terms for lack of diligent trademark enforcement (see: Aspirin, Cellophane, Escalator, E-Mail, Kerosene, Petrol, and Zipper).
The BAA doesn’t just have to worry about competitors though. A mark can lose its distinctiveness and become generic if the owner engages in what’s called naked licensing. Naked licensing is where a mark owner licenses the use of that mark by a third party (or by many third parties), but fails to place any limits on or exert any control over where, when, or on what that mark is used. By failing to police the use of its mark, the BAA would essentially be granting such a naked license to everyone who wanted it. That’s a really good way to lose your trademark rights really fast.
This may not seem like such a big deal when looked at in the context of a few t-shirts (though I’m sure apparel sales make up a big portion of the BAA’s bottom line), but it’s huge when looked at in the context of race sponsorship. Every year the BAA relies on big corporate sponsorship deals to defray the cost of putting on the race, to keep the cost of entry reasonable, and to generally provide the public with a tremendous day. While I’m sure that companies like Adidas sponsor the race partly out of a sense of tradition and loyalty to one of America’s great races, I’m sure they also do it so that they can license the Boston Marathon trademark, put “BOS” on whatever their hot running shoe is at the time, and plaster the city with marketing that incorporates the marathon and the BAA logo. If Adidas and other sponsors no longer had to pay to license the BAA’s marks, they might still be sponsors but they sure as heck wouldn’t pay as much, and that would no doubt endanger the future of the race itself, at least in its current form.
So that’s why I think it’s important for the BAA to bring lawsuits when they feel that their mark is being threatened. Here’s why I think this particular suit has merit:
Trademark infringement is premised upon a likelihood of confusion, no actual confusion in the marketplace must be shown. When determining whether a likelihood of confusion exists between two marks, a court will consider:
- The similarity of the marks with respect to appearance, sound, connotation, and impression;
- Similarity of the goods or services;
- Similarity of “trade channels”;
- Conditions of sale;
- Strength of the competing marks;
- Actual confusion;
- Number and nature of similar marks on similar goods;
- Length of time of concurrent use without actual confusion; and
- Variety of goods with which each of the marks is used.
I think that the first three factors are fairly definitive with respect to not only the corporate defendants and the way in which they marketed the products, but with respect to the John Doe defendants and their individual products as well, so I’ll just deal with those.
Similarity of the Marks
On both CafePress and Zazzle the products in question were found under headings of either “Boston Marathon Gifts” or “Boston Marathon T-Shirts.” Obviously, that use is exactly the same as the BAA’s registered trademark of “Boston Marathon.” As for the products themselves, I think that they all had an identical connotation and impression as the Boston Marathon trademark. Why do I think they had the same connotation and impression? Because that’s exactly what they were intended to do. None of those products would have any value if they did not expressly reference the Boston Marathon, which is a protected mark (nevermind the fact that some of them actually say “Boston Marathon” on them). I suspect the market for goods memorializing individuals’ singular tests of endurance within the city limits is fairly paltry.
Similarity of the Goods or Services
Here, again, I think that the similarity is in fact identical. While the Boston Marathon trademark is used, certainly, in connection with the race itself, the BAA also either produces or licenses use of the mark on all manner of clothing and gear. In the Adidas store alone you can find t-shirts, shorts, pants, jackets, hats, bags, and shoes for both men and women. The relevant market for purposes of trademark infringement then, is not just consumers of race services, but consumers of clothing, apparel, and gifts as well. As such, the goods and services marketed by the BAA under the Boston Marathon mark and the goods and services marketed by CafePress, Zazzle, and the John Does occupy the exact same market space and are therefore, for the purposes of trademark infringement, exactly the same.
Similarity of Trade Channels
Trade channels refers to the ways in which consumers get the goods at issue. Inherent in the consideration of trade channels, then, is the nature of the typical consumer, their market sophistication, and the amount of time they’re likely to spend in contemplation of their purchase. Again, I think that the trade channels at play are largely identical. I am, of course, referring to the internet. As evidenced by the BAA Website and the Adidas online store referenced above, products featuring the Boston Marathon mark are being heavily marketed on the internet. Clearly, the products sold by CafePress and Zazzle, who exist only on the internet, are being sold in the same trade channel. While the BAA website and the corporate defendants are two very different types of site indeed, the wonder of Google (as well as other search engines and content aggregators) brings them together. As such, someone typing “Boston Marathon t-shirt” into a search engine seems just as likely to come up with either parties’ site and thus either parties’ products.
When these three factors are taken together, I think that a court would be hard-pressed not to find a likelihood of confusion. This result seems particularly inevitable when the factors are considered in the light of the typical consumer and their buying experience. Namely, the typical internet purchaser of low cost Boston Marathon gear is not going to be so sophisticated or so interested in a particular product’s origin that they’ll spend time researching to make sure that the goods they’re interested in are in-fact licensed Boston Marathon merchandise. Rather, the thought process will likely be more along the lines of, “Hey, Boston Marathon gear! Looks cool, how much is it? I’m buying it!” (At least that’s how most of my internet purchases go). Again, in such a situation I think the likelihood of confusion is high, and that’s enough for trademark infringement.
So in the end I don’t think that this is a particularly close case, and I think that the BAA is absolutely doing the right thing in bringing it and protecting their hard fought for mark. I do, though, absolutely understand the outrage. As a resident of Boston I, like a lot of people I think, feel a close kinship with the Boston Marathon and in a way also feel a sense of ownership: this is my town’s race, it doesn’t belong to some company. Moreover, as we all get the ability to make whatever we want (I, for one, think CafePress is really, really cool by the way), I think we naturally react against any limiting of that ability. We feel like we should be able to make whatever we want. Fortunately for businesses (and for us), that’s not the law, and those businesses still have an economic incentive to make the stuff we really want.