Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE MIDWEST TENNIS & TRACK, CO.
Serial No. 74/076,496
August 27, 1993
John A. Beehner for applicant.
Stephen J. Jeffries
Trademark Examining Attorney
Law Office 9
(Sidney Moskowitz, Managing Attorney)
Before Hanak, Quinn and Hohein
Opinion by Hohein
An application has been filed by Midwest Tennis & Track, Co. to register the mark "OLYMPIAN GOLDE" for an "athletic track and field surfacing system comprised of a liquid, sprayable polyurethane which cures in the form of a continuous, seamless surface over prepared asphalt or concrete athletic surface." [FN1]
Registration has been finally refused on the basis that under 36 U.S.C. § 380, which codifies Section 110 of the Amateur Sports Act of 1978, applicant's mark may not be lawfully used in commerce for its goods because the use thereof constitutes a prohibited simulation of the word "Olympic." Consequently, the registration of applicant's mark would be contrary to the lawful use in commerce requirement imposed by Sections 1 and 45 of the Trademark Act, 15 U.S.C. §§ 1051 and 1127. [FN2] Registration has also been finally refused on the ground that applicant's mark consists of or comprises matter which may falsely suggest a connection with the United States Olympic Committee ("USOC") in violation of Section 2(a) of the Trademark Act, 15 U.S.C. § 1052(a).
Applicant has appealed. Briefs have been filed, but an oral hearing was not requested. We reverse both the refusal that applicant's use of its mark is unlawful and the refusal that its mark falsely suggests a connection with the USOC.
(a) Without the consent of the Corporation, any person who uses for the purpose of trade, to induce the sale of any goods or services, or to promote any theatrical exhibition, athletic performance, or competition--
(1) the symbol of the International Olympic Committee, consisting of 5 interlocking rings;
(2) the emblem of the Corporation, consisting of an escutcheon having a blue chief and vertically extending red and white bars on the base with 5 interlocking rings displayed on the chief;
(3) any trademark, trade name, sign, symbol, or insignia falsely representing association with, or authorization by, the International Olympic Committee or the Corporation; or
(4) the words "Olympic," "Olympiad," "Citius Altius Fortius," or any combination or simulation thereof tending to cause confusion, to cause mistake, to deceive, or to falsely suggest a connection with the Corporation or any Olympic activity;
shall be subject to suit in a civil action by the Corporation for the remedies provided in the Act of July 5, 1946 (60 Stat. 427; popularly known as the Trademark Act of 1946). However, any person who actually used the emblem in subsection (a)(2), or the words, or any combination thereof, in subsection (a)(4) for any lawful purpose prior to September 21, 1950, shall not be prohibited by this section from continuing such lawful use for the same purpose and for the same goods or services. In addition, any person who actually used, or whose assignor actually used, any other trademark, trade name, sign, symbol, or insignia described in subsections (a)(3) and (4) for any lawful purpose prior to enactment of this Act shall not be prohibited by this section from continuing such lawful use for the same purpose and for the same goods or services.
(c) The Corporation shall have exclusive right to use the name "United States Olympic Committee"; the symbol described in subsection (a)(1); the emblem described in subsection (a)(2); and the words "Olympic," "Olympiad," "Citius Altius Fortius," or any combination thereof subject to the preexisting rights described in subsection (a).
Preliminarily, we note that since applicant's claimed dates of first use are subsequent to the date of enactment referred to in 36 U.S.C. § 380(a), [FN4] the question of whether its use of the "OLYMPIAN GOLDE" mark is made lawful by the grandfather clause [FN5] for preexisting rights therein does not arise. Consequently, the critical provision for present purposes is 36 U.S.C. § 380(c) which, with the exception of any preexisting rights grandfathered by 36 U.S.C. § 380(a), makes it unlawful for anyone other than the USOC to use certain designations "or any combination thereof" (emphasis added). In contrast to 36 U.S.C. § 380(c), the Board has held that 36 U.S.C. § 380(a) provides the Patent and Trademark Office, and hence an Examining Attorney, with no basis for refusing registration. 36 U.S.C. § 380(a), instead, provides only that anyone who uses the various designations reserved to the USOC, including "any combination or simulation thereof" (emphasis added), without the consent of the USOC, shall be subject to a civil action by the USOC for the remedies provided in the Trademark Act of 1946. See United States Olympic Committee v. O-M Bread Inc., 26 USPQ2d 1221, 1224 (TTAB1993) and United States Olympic Committee v. Olymp-Herrenwaschefabriken Bezner GmbH & Co., 224 USPQ 497, 500 (TTAB1984).
It is obvious from the Examining Attorney's assertion that the mark "OLYMPIAN GOLDE" is a prohibited simulation of the word "Olympic" that the Examining Attorney is grounding his contention of unlawful use on 36 U.S.C. § 380(a)(4), which relates to the use of "the words 'Olympic,' 'Olympiad,' 'Citius Altius Fortius,' or any combination or simulation thereof tending to cause confusion ... or to falsely suggest a connection with the Corporation or any Olympic activity." However, as pointed out above, 36 U.S.C. § 380(a), including subsection (4), solely provides remedial rights to the USOC by way of a civil action; such section does not make use of the particular designations enumerated therein unlawful. See Olymp-Herrenwaschefabriken, supra at n. 4. Rather, it is 36 U.S.C. § 380(c) which, by granting the USOC exclusive rights to, inter alia, "the words 'Olympic,' 'Olympiad,' 'Citius Altius Fortius,' or any combination thereof subject to the preexisting rights described in subsection (a)," creates substantive rights in such designations and makes the unauthorized use thereof by others unlawful. Here, as applicant repeatedly pointed out in response to the refusal predicated on the contention of unlawful use, its mark "OLYMPIAN GOLDE" simply is not a combination of the terms "Olympic," "Olympiad" or "Citius Altius Fortius" set forth in 36 U.S.C. § 380(c). In view thereof, and since the prohibition of 36 U.S.C. § 380(c) extends, for present purposes, only to the words "Olympic," "Olympiad," or "Citius Altius Fortius," and any "combination"--but not "simulation"-- thereof, it is plain that applicant's use of the mark "OLYMPIAN GOLDE" is not unlawful.
*3 With respect to the remaining ground for refusal, we observe that in order to support a refusal that a mark "falsely suggests a connection" with a person or institution (including a juristic person such as a corporation) within the meaning of Section 2(a) of the Trademark Act, it must be demonstrated that the mark an applicant seeks to register is the same as or a close approximation of a previously used name or identity of a particular person or institution; that the mark would be so recognized in that it points uniquely and unmistakably to such person or institution; that no connection exists between the person or institution named or identified by the mark and the activities applicant performs under the mark; and that the name or identity of the person or institution is of sufficient fame or reputation that a connection with such person or institution would be presumed when the applicant uses its mark in connection with its goods or services. See, e.g., Consolidated Natural Gas Co. v. CNG Fuel Systems, Ltd., 228 USPQ 752, 754 (TTAB1985) and Buffett v. Chi-Chi's, Inc., 226 USPQ 428, 429 (TTAB1985).
The Examining Attorney, relying solely upon certain findings of fact made by the court in United States Olympic Committee v. International Federation of Bodybuilders, 219 USPQ 353, 354-56 (D.D.C.1982), argues that "Olympic words, symbols and simulations thereof[,] including the word 'Olympian,' are unmistakably associated [with] the U.S. Olympic Committee and have been recognized as doing so both by commercial sponsors of the committee and by act of Congress". In particular, the Examining Attorney points to "the tremendous good will the U.S. Olympic Committee has built up over the years" and the consequent desire "for corporate sponsors to associate themselves with the Olympic Committee". Stressing that "[i]n recognition of this desirability and the importance of corporate participation in Olympic Committee efforts [,] Congress enacted the Amateur Sports Act of 1978 granting the U.S. Olympic Committee the exclusive right to authorized commercial use of Olympic terminology," and noting applicant's admission that the term "GOLDE" in its mark is descriptive of the gold color of its polyurethane athletic track surface, the Examining Attorney concludes that because the term "OLYMPIAN" has been held to be a simulation of a statutorily protected Olympic term, [FN6] applicant's "OLYMPIAN GOLDE" mark "consists of matter unmistakably, uniquely, and recognizably associated with the U.S. Olympic Committee" in violation of Section 2(a).
Aside from the fact that the Examining Attorney's conclusion is undermined by the statement in his final refusal that applicant's mark "falsely implies a connection between applicant (and applicant's goods ...) and the International and United States Olympic Committees because it suggests use or endorsement of applicant's goods by the aforesaid Committees" (emphasis added), the issue before us is not whether the word "OLYMPIAN" falsely suggests a connection with the persona (i.e., name or identity) of the USOC but whether applicant's "OLYMPIAN GOLDE" mark does so. Applicant, in this respect, insists that "it is obvious that the mark 'Olympian Golde' connotes the majestic gold track surface which Appellant markets and not, as argued by the Examiner, a relationship with the United States Olympic Committee". In addition, applicant maintains that:
*4 [T]he words Olympian and Golde would not normally be combined in such a phrase as ... the word "Olympian" when used as a noun denotes, among other things, a participant in the Olympic games. To define a participant in the Olympic games as a "golde" participant makes no sense....
It is our opinion that the mark "OLYMPIAN GOLDE" is not a close approximation of the name or identity of the USOC; instead, we believe that they are in fact different. [FN7] In particular, due to the variations in possible meaning or connotation for the term "OLYMPIAN GOLDE," we cannot say on the basis of the present record that applicant's mark points uniquely and unmistakably to the USOC. Besides the somewhat problematic examples offered by applicant, we think that the term "OLYMPIAN GOLDE" may as likely signify or connote an Olympic gold medal, which is awarded to the contestant or team from any participating country finishing first in a given event in the Olympic Games held under the auspices of the International Olympic Committee, rather than suggesting a connection with the USOC, whose statutorily defined mission is the fielding of participants to represent the United States in the Olympics. See Calvin Industries Inc. v. Calvins Pharmaceuticals Inc., 8 USPQ2d 1269, 1272 (TTAB1988) [mark "CALVINS" held not to falsely suggest a connection with the opposer since the record did not demonstrate that the term "CALVINS" was associated solely with the opposer]. The Examining Attorney, in short, has failed to sustain the burden of establishing that the mark "OLYMPIAN GOLDE" denotes a false suggestion of a connection with the USOC. [FN8]
Decision: The refusals to register are reversed.
Members, Trademark Trial and Appeal Board
FN1. Ser. No. 74/076,496, filed on July 9, 1990, which alleges a date of first use of May 31, 1985 and a date of first use in commerce of June 30, 1988. Although registration had been finally refused because the previous description of goods was indefinite for purposes of identification and classification, applicant in its appeal brief proposed to identify its goods as indicated above and to classify the goods in International Class 1. Inasmuch as the Examining Attorney in his appeal brief states that applicant's suggested changes in the identification of goods and their classification are acceptable, and thus the basis for the final refusal has been overcome, the application is accordingly deemed to be amended by Examiner's Amendment to set forth the identification of goods as stated above and to classify such goods in International Class 1.
FN2. It is settled that the Trademark Act's requirement of " 'use in commerce,' means a 'lawful use in commerce,' and [that the sale or] the shipment of goods in violation of [a] federal statute ... may not be recognized as the basis for establishing trademark rights". Clorox Co. v. Armour-Dial, Inc., 214 USPQ 850, 851 (TTAB1982).
FN3. As codified by 36 U.S.C. § 373(4), Section 103(4) of the Amateur Sports Act of 1978 defines "Corporation" as meaning the "United States Olympic Committee".
FN4. The language "this Act" in 36 U.S.C. § 380(a) would appear to mean the Amateur Sports Act of 1978, which was enacted on November 8, 1978, inasmuch as Section 1(a) thereof provides that (emphasis added): "The Act entitled 'An Act to incorporate the United States Olympic Association', approved September 21, 1950 (36 U.S.C. 371 et seq.), hereinafter in this Act referred to as 'the Act', is amended...." P.L. 95-606 § 1(a), 92 Stat. 3045.
FN5. Black's Law Dictionary (5th ed. 1979) at 629 defines "grandfather clause" as, inter alia, "[a]n exception to a restriction that allows all those already doing something to continue doing it even if they would be stopped by the new restriction".
FN6. Specifically, the court in Bodybuilders, supra at 358, found as a fact that " 'OLYMPIAN' is a term which is widely and commonly recognized as referring to athletes who have participated in the Olympic Games".
Olympiad ... n. ... 2. a celebration of the modern Olympic Games....
Olympian ... adj. ... 3. of, resembling, characteristic of, or suitable to the gods of Olympus; majestic or aloof: an Olympian landscape; an Olympian disdain. --4. 4. an Olympian deity. 5. a contender in the Olympic Games. ...
Olympic ... adj. 1. of or pertaining to the Olympic Games: an Olympic contender. ... 4. Olympian (def. 3). --n. 5. an Olympian deity. 6. Olympics. See Olympic Games. (def. 2). ...
Olympic Games ... 1. Also called Olympian Games. the greatest of the games or festivals of ancient Greece, held every four years in the plain of Olympia in Elis, in honor of Zeus. 2. a modern international sports competition, held once every four years. ....
Similarly, Webster's Third New International Dictionary (1976) at 1573 lists the following definitions:
olympiad ... n -s often cap ... 2a: a quadrennial celebration of the modern Olympic Games ... b : OLYMPIC GAMES....
2olympian ... n ... 2 usu cap : a participant in the Olympic Games....
3olympian ... adj, usu cap ... 2: befitting or characteristic of the gods conceived as inhabiting Mount Olympus: displaying majestic omniscience or detachment: LOFTY, SUPERLATIVE....
olympian games n pl, usu cap ...: a Panhellenic festival dedicated to Zeus, originating in 776 B.C. and held every fourth year ..., and consisting of contests in sports, music, and literature....
1olympic ... adj, often cap: 3OLYMPIAN.
2olympic ... adj, often cap ... 2: of or relating to the Olympic Games.
olympic games n pl, usu cap O & G ... 1: OLYMPIAN GAMES 2: a modified revival of the Olympian games originating in Athens in 1896, held once every four years, and consisting of international athletic contests--called also Olympics.
olympics ... n pl, usu cap: OLYMPIC GAMES.
FN8. We observe that the Examining Attorney's appeal brief discusses the refusal under Section 2(a) by referring only to a false suggestion of a connection with the USOC. In particular, the Examining Attorney points out in a footnote that for purposes of analysis under Section 2(a), the USOC "may be regarded either as a juristic person under Trademark Act Section 45, or as an institution by virtue of its inextricable association with the Olympic Games," citing U.S. Navy v. United States Mfg. Co., 2 USPQ2d 1254, 1257-58 (TTAB1987). While it is therefore clear that the Examining Attorney does not consider the USOC to be a "national symbol" within the meaning of Section 2(a), we note that in any event a refusal based on such a theory could not be affirmed since the Supreme Court in San Francisco Arts & Athletics Inc. v. United States Olympic Committee, 107 S.Ct. 2971, 3 USPQ2d 1145, 1155 (1987), specifically stated that "[t]he fact that Congress granted it a corporate charter does not render the USOC a government agent". The designations to which exclusive use has been granted to the USOC consequently would not be considered "national symbols" under Section 2(a).