Michelle McCliman Trademarks Law Blog on Lawyers.com

A while ago, a friend of a friend asked me for some advice regarding a
cease and desist letter their organization received from the owner of
the trademark "Iron Man" (World Triathlon Organization).  Their
organization held team races which used the term "Iron Man"
descriptively (i.e. to denote that the race would not include any
substitutions, so that each person on the team had to "iron man" the
race).  Not surprisingly, when I looked into this matter, it was easy to
see that the trademark owner was using its superior resources (it is a
big company) and stable of high-paid attorneys to shut down anyone from
using the term whether it was in a trademark sense or not. The trademark
owner went after every person/entity trying to use the term for their
goods or services despite the goods and services having no relation to
those promoted by WTO.  In one instance, WTO challenged the use of
"Iron Man" in association with scientific measuring instruments causing
the registrant to abandon its application.  Not sure how measuring
instruments can be confused with triathlon-related activities, but
clearly WTO does not want anyone to use "Iron Man."



My advice to this small organization was to just give up using the term
because litigation would financially ruin the organization and there was
no doubt that World Triathlon Organization ("WTO") had the resources to
see the litigation out to its conclusion.  While legally, there was a
strong argument that the small organization was not doing anything
wrong, testing that theory would undoubtedly take years and hundreds of
thousands of dollars in litigation costs.

 

Remember, trademarks are supposed to identify source and not confuse
consumers, but not to take words or phrases out of the lexicon.  That is
to say, a person should be able to use a term to describe a product
even if the term is the trademark of another (e.g. I am wearing Nike
shoes).  As long as the person or entity is not inferring that it is a
sponsor or affiliate of the trademark owner, then from a strictly legal
sense that should be okay.



Unfortunately, some companies, like the owner of "Iron Man" aggressively
fire off cease and desist letters, oppose trademark registrations, or
file lawsuits to those using their trademarked name legitimately.  The
most recent example of this is the NFL's aggressiveness in not allowing
those not authorized by the NFL to use the term "Super Bowl."  Look at
the advertisements from companies not from "official sponsors" of the
event, they will advertise deals for the "big game" or "super" savings,
but will not use the term "Super Bowl."  That is because the NFL polices
any such use and has the means to drive many of the smaller entities
out of business with litigation, or make life miserable for the bigger
companies who'd rather spend their money on promotions or building their
business and not litigation.



As a trademark attorney, I advocate strongly for my clients to ensure
that their rights are protected.  But, on the other side sometimes
legality should give way to reality so that my clients can continue to
grow their businesses.