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Puma, the shoe and apparel brand, filed a trademark application on the same day that the International Olympic Committee and Tokyo 2020 Organizing Committee made the tough call to postpone the Olympic Games in 2020, pushing the games back to Summer 2021. It was a bold application where Puma initiated a process to register the mark “PUMA TOKYO 2021.”
Less than two months later, Puma has already been told that its application has been preliminarily refused for multiple reasons.
First of all, the examining attorney at the United States Patent and Trademark Office has determined that the PUMA TOKYO 2021 mark is likely to be confused with existing registrations for “TOKYO 2020” owned by the United States Olympic Committee (USOC). The examining attorney came to the proper conclusion that the marks are nearly identical and create a highly similar overall commercial impression.
Second of all, Puma’s application is currently rejected because there is believed to be a false suggestion of a connection between Puma and the Olympics, as well as the USOC. This concern was particularly prudent, because the Olympics and the USOC are so well known and often are associated with sponsors. Yet, Puma is not directly affiliated with either the Olympics or the USOC. Puma may wish to engage in ambush marketing, but the United States Patent and Trademark Office does not seem willing to allow its forum to be used for ulterior motives.
In fact, this was not a case of first impression with regard to a brand seeking to register a trademark connected to the Olympics. The United States Patent and Trademark Office previously rejected an application to register the mark “SYDNEY 2000” for use in connection with advertising and business services because it falsely suggested a connection with the Olympic Games.
“In this case, the use of the wording ‘TOKYO 2021’ contained in the proposed mark would be clearly seen by the general public as referring to the TOKYO 2020 Olympic games that have been rescheduled to 2021 because of the Covid-19 pandemic, and thus to the widely known organization that comprises the Olympic games (i.e., the United States Olympic Committee),” states the Office Action that rejects Puma’s trademark application. “The fact that the applicant’s goods include a variety of athletic and sports bags, clothing and sports and athletic equipment, etc. serves to enhance and increase the likelihood that there would be a false connection with the Olympics, and thus the United States Olympic Committee.”
This rejection is not the end of the road for Puma, which has the right to provide an official response within six months of receiving the Office Action. However, the trademark application was destined for failure as soon as Puma’s attorney paid the filing fee to initiate the process.
Interestingly, Puma subsequently filed another Olympics-related trademark after filing the PUMA TOKYO 2021 application. Seven days later, Puma filed to register the mark “PUMA TOKYO 2022,” which was apparently done in case the Olympics Games will be postponed once again. That application has received an Office Action identical to the one attached to the PUMA TOKYO 2021 filing and is destined for similar failure.
Darren Heitner is the founder of Heitner Legal. He is the author of How to Play the Game: What Every Sports Attorney Needs to Know, published by the American Bar Association, and is an adjunct professor at the University of Florida Levin College of Law. You can reach him by email at heitner@gmail.com and follow him on Twitter at @DarrenHeitner.