Olympic lawyers go for gold in trademark protection

Olympic Gold Medal
Fabrice Coffrini | Getty Images
Olympic Gold Medal

The Olympic games may be coming to a close in Brazil, but Olympic lawyers are still working hard in the U.S.

The U.S. Olympic Committee has come under fire this year for sending warning letters to businesses tweeting with "official" Olympic hashtags like "#TeamUSA" and "#Rio2016." But this isn't the first time the USOC has taken steps to protect its trademarked assets. Legal actions involving the USOC have become as routine as the games themselves.

Part of it is due to the special permission afforded the USOC in defending its intellectual property, and some is an abundance of intellectual property to be defended.

For each Olympic games stretching back decades, the USOC has parked trademarks on the "city year" combination of words ("Rio 2016" and "Sochi 2014," for example). There's also some standards it trademarks for every event: "Road to London," "Road to Rio" and "Road to Pyeongchang," the site of the 2018 Winter Games.

Of course, the USOC can't see into the future. So it seems to hedge its bets on the site of future Olympics and register trademarks for potential sites and carry them long after the games are played somewhere else.

That's why it has trademarks on "Houston 2012" and "Boston 2024," even though the latter pulled its bid.

Just before the last Summer Games in London, a Greek restaurant in Philadelphia was forced to change its name and logo after 30 years in business, according to Philly.com. Olympic Gyro rebranded as Olympia Gyro after receiving cease and desist letters from the USOC.

Also in 2012, the committee sent a cease and desist letter to a group of knitters from the website Ravelry who were organizing a "Ravelympics." The committee ended up apologizing, but not until after drawing widespread condemnation on the internet.

Not all of the disagreements are settled as calmly as with the knitters.

The USOC has been involved in a number of trademark lawsuits over the years. The lawsuits peaked in 2002 when 11 cases were filed.

This year, a Minnesota carpet-cleaning company filed suit against the USOC in August requesting a declaratory judgement to clarify the law when it comes to public discourse and social media conversations. Specifically, the Zerorez company received a cease and desist letter after sending a series of tweets with wishes to 11 Minnesotans representing the U.S. in Rio.

The USOC actually has special permission from the government concerning use of its name as well as the words "Olympic" and "Olympiad." Still, said Jonathan Hyman, a trademark attorney at Knobbe Martens, "there should be some leeway for brands to discuss the games that does not constitute trademark infringement."

'Hashjacking' or marketing?

CNBC called it hashjacking, but other people call it "ambush marketing" — unauthorized use of advertising terms to create a misleading commercial association, usually during a big event.

The idea is to hop onto the bandwagon of advertising and get some free publicity from people searching "Olympics" or "Rio de Janeiro." Under the Olympics' Rule 40, Olympics-related words can't be used by non-official sponsors during the games. Athletes also have to sever ties with non-Olympic sponsors for the time during the Olympics.

The USOC has developed a reputation for aggressively defending its intellectual property. And you can see why — from their point of view, unauthorized use of words for advertising can confuse consumers into thinking brands are associated with the Olympics when they're really not.

The real official sponsors — brands like Coca Cola, GE and McDonald's — shell out big bucks to be able to say they're "official" sponsors. To the USOC, every company not associated with the games that uses them in their ads is a dilution of their brand.

But in the hashtag example, it draws into question whether the laws we have on the books are should be updated for the social media age.

"We just felt bullied," Zerorez co-owner Michael Kaplan told the St. Paul Pioneer Press. "We don't want to pretend we're Olympic sponsors, but we do want to be part of the conversation."

Often in these cases, the USOC has U.S. law on its side and a bevy of phrases and symbols trademarked for use in sport-related arenas.

Through the years, the USOC has trademarked phrases like "go for the gold," "let the games begin" and "don't be an asterisk," which was an old anti-doping ad campaign.

Disclosure: CNBC parent NBCUniversal owns NBC Sports and NBC Olympics. NBC Olympics is the U.S. broadcast rights holder to all Summer and Winter Games through the year 2032.