A Look at the Ironman Triathlon Brand
| Publication year | 2012 |
| Pages | 35 |
2012, February, Pg. 35. A Look at the Ironman Triathlon Brand
February 2012
Vol. 41, No. 2 [Page35]
Intellectual Property Law articles are sponsored by the CBA Intellectual Property Section. They provide information of interest to intellectual property attorneys who advise clients on protecting and exploiting various forms of intellectual property in the marketplace.
Coordinating Editors
K Kalan, Denver, of Berenbaum and Weinshienk PC-(303) 592-8301, kkalan@bw-legal.com; William F. Vobach, Littleton, of Swanson and Bratschun, L.L.C.-(303) 268-0066, bvobach@sbiplaw.com
About the Author
Emma Garrison is a litigation associate at Featherstone Petrie DeSisto LLP and serves on the Executive Council for the CBA Young Lawyers Division. She regularly participates in triathlons of various distances, but has not yet attempted an Ironman® triathlon-(303) 626-7116, egarrison@featherstonelaw.com.
This article provides a brief overview of the history of the Ironman® trademark and its use in triathlon races and on related merchandise, as well as litigation and other trademark policing efforts associated with the Ironman brand.
Every December, NBC Sports airs its coverage of one of the most grueling and exhilarating demonstrations of human will and endurance: the Ironman®. This quintessential triathlon race is a 140.6-mile journey on the big island of Hawaii often characterized as: "Swim 2.4 miles, bike 112 miles, run 26.2 miles . . . brag for the rest of your life."(fn1) Fifteen people participated in the first Ironman race in 1978. Now, twenty-three Ironman races are held worldwide, and tens of thousands of triathletes from all over the world vie for the coveted 1,800 slots at the Ironman World Championships in Kona each year. Products from t-shirts to watches to coffee mugs display the name "Ironman."
The Hawaii Ironman World Championships arguably is the most well-known event in the sport of triathlon; as such, some think the terms "Ironman" and "triathlon" are interchangeable. They are not. The word "triathlon" simply means an event that consists of any distance of swimming, biking, and running. "Ironman" is a registered trademark, and a heavily policed one at that. "One would be hard-pressed to come up with an industry, activity or economy in which one single trademark is more powerful or over-arching than in triathlon, and the trade name is Ironman."(fn2)
Trademark Law
The purpose of trademark protection is to preserve the trademark owner's goodwill and reputation and to enable consumers to easily distinguish competing products and services.(fn3) The Lanham Act(fn4) provides for the registration of trademarks, which include "any word, name, symbol, or device, or any combination thereof [used or intended to be used] to identify and distinguish [a producer's] goods . . . from those manufactured or sold by others and to indicate the source of the goods . . ."(fn5) and for servicemarks, "in the same manner and with the same effect as are trademarks, [which] when registered . . . shall be entitled to the protection provided herein in the case of trademarks."(fn6) A trademark owner may sue for infringement if an unauthorized use of its mark or of a similar mark is likely to cause confusion in the marketplace.(fn7) This analysis depends on whether the consumer is "likely to be deceived or confused by the similarity of the marks."(fn8)
Amendments to the Lanham Act, known as the Federal Trademark Dilution Act, also provide remedies when a mark that has been deemed "famous" is diluted through a blurring or tarnishing of the mark's image, even when there is no likelihood of confusion.(fn9) To be considered a famous mark, it "must have a degree of distinctiveness and strength beyond that needed to serve as a trademark; it must be truly prominent and renowned."(fn10) For both infringement and dilution claims, the stronger the mark, the more protection it will be afforded.
A trademark's strength can be measured by its point along a spectrum. In ascending order of relative strength along the spectrum, a trademark may be: (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.(fn11) On one end of the spectrum, generic terms, like "cola" or "triathlon" or "marathon," refer to a general class of goods or services and are not entitled to trademark protection because they do not indicate the source of the product or service.(fn12) On the other end of the spectrum, arbitrary marks use ordinary words or symbols that do not suggest or describe the good or service, but seem unconnected, such as "Apple" referring to a computer.(fn13) A fanciful mark is a word invented to serve as a trademark, such as "Kodak" for cameras and film.(fn14)
The Ironman Trademark
Any race consisting of a 26.2-mile run may be called a marathon; however, a 140.6 mile race of swimming, biking, and running may not be called an Ironman unless a license for use of the term has been granted by the World Triathlon Corporation (WTC), the current owner of the Ironman brand. The majority of WTC's registered trademarks depict the term "Ironman" with a distinctive circle over the "m" (the "M-dot") "giving the artistic appearance of a man within the word 'Ironman.'"(fn15)
When viewed in terms of the spectrum described above, the Ironman mark is most likely "suggestive," because it suggests characteristics and "requires the consumer to use imagination and perception. . . ."(fn16) Suggestive marks (along with arbitrary and fanciful marks) are most entitled to trademark protection because they are "inherently distinctive" in that their "intrinsic nature serves to identify a particular source of a product" (or service).(fn17) In contrast, "descriptive" marks that merely describe a product are not "inherently distinctive" because they do not identify the source.(fn18)
As one court noted, "the term [Ironman] is commonly used in sports journalism to describe an athlete's physical durability. . . ."(fn19) It does not appear that the word Ironman was used in conjunction with the word triathlon until the inaugural Ironman event in 1978.(fn20) Ironman, particularly when used in conjunction with a triathlon event, suggests endurance and athleticism. Therefore, Ironman may be considered a strong mark, because it does not merely describe the type of event, but requires the use of imagination and serves to identify the source. However, because it has a common meaning outside the trademark, Ironman is not as strong as it might be if the name seemed unconnected to the event, like an arbitrary or fanciful mark.
Origins of the Ironman Name and Initial Disputes...
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