Marketers Beware: Avoid the Olympic Temptation
By: Paul E. Thomas
The famous interlocking ring symbol of the Olympic Games was devised in 1913 by Baron Pierre de Coubertin, the founder of the modern Olympics, and adopted by the International Olympic Committee in 1914. Each of the five rings in the symbol represents a continent (the Americas are considered as one continent, and Antarctica is not included) and, according to the Olympic Charter, “expresses the activity of the Olympic Movement and represents the union of the five continents and the meeting of athletes from throughout the world at the Olympic Games.” Its debut delayed by the First World War, the Olympic Symbol was first used during the VIIth Olympiad in Antwerp in 1920.
With the XXIXth Olympiad set to begin just a little over a week from now in Beijing, business marketing specialists might wonder whether they can take advantage of the worldwide excitement and anticipation by developing advertising and marketing campaigns that have Olympic themes and use the Olympic Symbol in connection with their own company’s goods or services.
The question has a quick answer: don’t even think about it. (And, be very careful even if your business is located on the Olympic peninsula in the State of Washington.)
Many countries have granted their designated National Olympic Committee with strong trademark ownership and enforcement rights in the five rings symbol and its related terms and symbols, and the United States is no exception. In 1978, the U.S. Congress passed the Ted Stevens Olympic and Amateur Sports Act (“OASA,” 36 U.S.C. § 220501 et seq.), which gives the United States Olympic Committee (“USOC”) exclusive control over the following symbols:
- the Olympic Symbol (five interlocking rings)
- the symbol of the International Paralympic Committee (3 TaiGeuks)
- the symbol of the Pan-American Sports Organization (a torch surrounded by concentric rings)
- the USOC emblem (an escutcheon with a blue chief and vertically extending red and white bars on the base with the Olympic Symbol displayed on the chief)
OASA also gives the USOC exclusive control over the following terms and phrases:
- Citius. Altius. Fortius. (“Swifter. Higher. Stronger.”)
- America Espirito Sport Fraternite
- United States Olympic Committee
- any combination of the terms listed in 1-8 above
But, marketing specialists might ask, are there no exceptions to OASA that would allow U.S. companies to use these words and symbols without an official license? What about fair use?
The concept of trademark fair use has been developed by courts to deal with the various circumstances in which party A uses a mark owned by party B in such a way that consumers are not confused into the mistaken belief that A is the owner of the mark or is somehow associated with B. The kind of trademark fair use relevant here is use in which A uses a mark owned by B to discuss the goods or services offered by B, even if A’s ultimate goal is to describe A’s own product. This is called “nominative fair use” because the user, A, names the real owner of the mark, B.
The Lanham Act, the federal trademark statute, is based on a broad policy that consumers should be protected from deceptive trade practices. So, when a nominative fair use is challenged, courts apply a three-question test to determine whether A’s use of B’s trademark is likely to confuse or deceive consumers. First, can A refer to B’s products without using B’s mark? If the answer is yes, A’s use of B’s mark may not be a fair use. Second, has A used B’s mark more than necessary? If A’s use of B’s mark can reasonably be deemed excessive, overly repetitive, or overly conspicuous, the use may not be fair. Third, has A done or said things which imply that B endorses or sponsors A’s products? If the answer is yes, then the use may not be fair.
Unfortunately, the answer to the marketing specialists’ question is that nominative fair use does not apply in the context of the USOC’s trademarks. Congress has given the USOC heightened exclusivity in regard to its trademarks as an incentive for the USOC to produce a high quality product that will in turn benefit the people of the United States and the world: as the Olympic charter states, “to educate young people through sport in a spirit of better understanding between each other and of friendship, thereby helping to build a better and more peaceful world.” In practical terms, this heightened exclusivity means that if the USOC objects to the use of one of its trademarks by another party, the USOC does not need to show that confusion among consumers is likely to occur (the standard test for trademark infringement) to have the legal grounds on which to demand that the use be stopped.
In short, there is no such thing as fair use of the Olympic Symbol, of the term “Olympic,” or of the other related symbols and words. Under OASA, the only United States entities, other than the USOC, who can use the Olympic marks without a proper license from the USOC are those who can demonstrate that their use began prior to September 21, 1950. In addition, the OASA statute contains exceptions for businesses on the Olympic peninsula in Washington State: the word Olympic may be used to identify a business or goods or services if it is not combined with the USOC trademarks, if the term refers to the geographical region or mountains of that name and not to Olympic activity, and if the business, goods or services are operated, sold and marketed in the state of Washington, west of the Cascade Mountain range, and marketing outside that area is not substantial. For everyone else, treading a highly competitive and expensive path to official Olympic sponsorship is the only way to legal use of the distinctive Olympic trademarks.
Alternatively, marketing specialists can seek a route around the OASA prohibition, which will allow them to create advertising materials that have some of the Olympic flavor without using the Olympic trademarks. For example, photographs of national flags, of competing athletes, or of Beijing cityscapes can readily be licensed from commercial photo archives. Such photographs could be used to eye-catching effect in advertising materials. With creativity and imagination, marketing specialists can capture some of the Olympic spirit without stepping over the clear line drawn by the federal OASA statute.