Thank you everyone for tuning
into today's Fireside Chat.
We have a very special program for you today.
I am Steven Berk, Group Director for
the Trademark Law Offices at the United
States Patent and Trademark Office,
and it is my pleasure to introduce
our host and guest today.
First is Commissioner for
Trademarks, Dave Gooder, a long time
IP Attorney and trademark practitioner
who took the helm of of the
Trademark Office a year ago March.
Dave is leading the Trademark Office
during a period of a large increase in
the volume of trademark applications
due to the growth of e-commerce,
the desire of many Americans to start their
own companies and launch new products,
and the rapid globalization of brands,
among other factors.
He is also overseeing the adoption of what
some have called the most significant
trademark legislation of the past 75 years,
that being the Trademark
Modernization Act of 2020.
Suffice it to say,
Dave is a very busy person
and we thank him for his time today.
He is joined by Dana Jozefczyk,
who became Associate General Counsel
for the intellectual Property
for the US Olympic and Paralympic
Committee in September 2019.
Dana was previously a partner at Merchant
& Gould Trademark Group in Denver, CO,
and at the US Olympic and
Paralympic Committee,
Dana's focus is on brand
protection and enforcement.
And Dana,
I imagine you are as equally busy as Dave
because of the Summer Olympics coming up.
So again,
So, like Dave,
we thank you very much for your time today.
And like everybody out there,
I think we're very excited to have
our athletes going to Tokyo this year,
joining the ranks of past
notables such as Jesse Owens,
Muhammad Ali, Mary Lou Retton,
Sugar Ray Leonard,
just to name a few.
Our athletes will be competing in
various sports such as track and field,
swimming, gymnastics
and the list goes on and on.
Each of these sports and others
are supported by their own
brands and through trademarks,
and I would note many of these
activities such as extreme sports,
are growing and catching on like
wildfire. At the Trademark Office,
we recognize the importance of
all sports and recreation brands
to the US economy.
In fact,
we will soon be launching a new
trademarks and sports initiative aimed
at educating the public about the
importance of sports brands and trademarks.
We hope to inspire more Americans
to become engaged in the many
facets of the fast growing sports
and recreation economy.
So please be on the lookout
for that in the coming months.
OK, time permitting,
we will take questions,
question and answer session at the end.
So before I hand things over, the mailbox
addressed for you to submit questions is
OCCOfeedback@uspto.gov.
Let me repeat that again.
It is OCCOfeedback@uspto.gov and we
will try to catch as many questions
as we can at the end. With that it is
my pleasure to turn it over to Dave
and Dana. Thank you both and we look
forward to your insights in conversation.
Thank you. Thanks, Steve,
very much. Dana, welcome.
It's great to see you
as we're all doing these things.
Welcome and
thanks for taking the time to do this.
Absolutely, thank you so much,
Commissioner Gooder, this is a pleasure.
Please call me Dave.
Commissioner Gooder always sounds like my dad.
We've been over that before, I just always forget.
So one thing I always love finding
out about people who are doing
interesting things is how,
what's the path you traveled
to get to where you are?
I mean, I know you were in private practice,
but what got you to the USOPC
and doing what you do now?
Sure, happy to talk about that.
So. I grew up in upstate New York.
I grew up playing, you know, sports,
volleyball, softball, soccer.
I was not a stellar athlete by any means,
but I enjoyed playing sports and I loved
every two years when the Olympics came on.
I loved watching with my family.
I loved watching with my friends.
Being around the world of
sports and participating in sports
was definitely something that I feel
like was a forging element in my life
growing up. After I graduated high school
I went to school in Boston.
I went to undergrad at Boston College
and when I first matriculated at BC,
I thought I wanted to pursue a pre-med path.
So I did all the things that you do
your freshman and sophomore year,
when you're looking to be pre-med.
I came to the realization at some
point at the end of my sophomore year
that the pre-med path was not for me.
However,
by this time I had already engaged in
a number of science courses, as well
a number of math courses and
the combination of the two of them
actually led me into the world of
computer programming and bioinformatics.
So kind of programming genes and
proteins and that stuff,
so all of this put together during
undergrad weirdly piques my interest
in patent law.
I thought to myself that you know
technology and science and being
able to approach it from a legal
perspective would be a fascinating career
path, so I ended up at CU Boulder.
That's where I went to law school.
I had an uncle who lives in the Denver
area at the time and Boulder is a
gorgeous place to spend a couple of years.
So I went to law school there
and when I was at CU,
I started interning at a law firm, Merchant
and Gould. It's a Minneapolis based law firm,
but it's an intellectual property boutique.
So when I started my career at Merchant,
I focused on patent law, very
very heavy in the computer software space.
And I spent about the first four to
five years in my career doing patent law.
At some point during that time,
I realized that I was not a patent lawyer.
I didn't want to be a patent lawyer.
I wanted to do something else,
but my mindset at the time was very myopic.
I remember thinking to myself,
oh my gosh,
if I'm not going to be a patent lawyer,
can I still do law?
In retrospect it was
a very strange way to think.
That being said,
my managing partner at Merchant at the
time, he was not quite
as short sighted and he kind of encouraged
me to join our trademark group
which was based out of Minneapolis.
You know this was all pre COVID.
This is before remote work
kind of became the norm.
So having the Minneapolis, the trademark group
based in Minneapolis and me being in Denver,
it did take a little bit on
my part to go back and forth.
I started flying out to Minneapolis,
meeting the folks there, becoming
part of that team. On my side,
they really mentored me,
took me under their wing, taught me
trademark law enforcement brand protection,
all the things that I would
actually end up doing as a career.
So I worked in that trademark group
out of the Denver office for I think
about five or six years.
I'm not sure about that exactly,
but really had an opportunity to kind
of build our Denver based trademark group,
which was an incredible
chance in my life.
We got to focus on Denver based clients,
building our Denver based trademark practice,
and thinking about how we wanted
to approach brand strategy through
our Denver office, which was great.
About a year before
I took the job at USOPC,
I saw my general counsel speak
at a sports law forum.
I think it was at the Rocky
Mountain IP Institute actually,
and I remember thinking to myself,
gosh,
that would be such a neat job,
if I could get that IP job at
USOPC, that would be really cool.
Lo and behold,
a year later it came up and I ended up here.
That's a great path.
I remember when that job got posted and
a lot of people looked at it and said,
wow, what a fabulous job and in
a great place to live and and so
you obviously dazzled everybody
because you're here
so that's great,
Is there,
if you look back at all these
things that you did before,
if you had to pick out
one thing that really has
impacted how you do your work now,
what what would it be?
Do you think?
Yeah,
that's a good question.
So I actually think the thing that
impacts most, if none of the things that
I just spoke about throughout my life.
Despite picking a communications
based career,
I've always struggled with teaching others.
I've had a hard time kind of
verbalizing my thought process,
so I'd never been able to tutor
other people or kind of explain the
way I was reasoning or thinking.
This is not a great asset for a lawyer,
by the way.
And at some time when I was
working at Merchant,
I had the opportunity to teach at CUI.
t wasn't a full time professor, it was,
it was a
kind of
I guess I was a guest teacher
for a couple of classes and that
kind of gave me
the opportunity to practice more
this educational approach.
A better way of explaining myself, a better
way of communicating the way I'm thinking,
especially to law students,
folks who were not kind of as like deep
in the trademark IP space at that time,
but we're trying to figure out
what path of law they'd like to pursue and
where they would like their life to go.
So I've always been really,
really grateful for my
opportunity to teach it to you,
in large part because I help,
I think that helped me become someone who
can better explain where I'm coming from.
Better explain the why behind,
you know what we're doing and why
we're acting in the way that we're acting.
And a lot of what my current role is
right now is we do a lot of education.
There's a lot of communication
about our enforcement strategy.
The way that we approach our brands and
the reasoning behind you know the way
that we take certain actions that we take.
And so I do feel like my time
teaching helped me develop some
skills where I could actually talk
to people and have them understand,
you know, kind of the why.
And have the people shooting questions
back at you and things like that.
Keeping you challenged.
Well, OK, so speaking of enforcement,
you've got a fairly big challenge coming
up this summer. The Tokyo Games
are what, a little over a month away?
An no doubt you and your team
are gearing up for all that.
Tell us a little bit about your approach to
brand protection, brand enforcement
in and around the Olympic Games.=
I=an the Paralympic Games.
Yeah so
our approach really is highly focused,
as I just mentioned, on education.
One thing that a lot of folks are
not aware of is that the USOPC
is a nonprofit organization.
We do not receive taxpayer funding.
We don't receive government assistance.
We are an organization that relies on
our sponsors and our fundraising to
send Team USA athletes to the games.
So this is something that a lot of
people are not aware of and it's
something again in my educational
approach to brand enforcement
that I like to explain to folks.
Because of the way that we're structured,
because we're a nonprofit entity,
Congress set us up in a manner whereby
we have exclusive rights to certain
intellectual property and the statute
that set us up in this capacity is a
is an act called the Ted Stevens Act.
Well,
it's actually called the Ted Stevens
Olympic and Amateur Sports Act.
I'm going to shorthand that David
for this conversation. I'm just gonna
call the Ted Stevens Act, no problem.
So the Ted Stevens Act recognizes the
way that we function as an organization.
And because we are not
you know,
receiving any sort of taxpayer money
it set us up in a manner so that we
have the exclusive right to use
certain terms commercially
in the United States.
And those marks include Olympic,
Paralympic, Paralympiad
Olympiad, Citius, Altius, Fortius,
Pan American and Parapan American.
They also include the iconic
symbols such as the Olympic
rings and the Paralympic agitos.
So the reason why that the structure
is so important is by giving you
USOPC the exclusive right to use and
authorize others to use these marks.
Congress enabled us to kind of have a
very strong sponsorship and licensing
structure whereby we can ensure to
our sponsors and our licensees that
they have the right to use certain
marks in certain categories and that
we as the USOPC will be able to
enforce if third parties use those
same marks in an unauthorized manner.
So a lot of what I'm doing right now,
Dave, is talking to folks explaining
why were organized the way that
we're organized and explaining the
why behind why we reach out.
So you really kind of almost
got a dual view of this.
I mean you're a brand owner,
but you also have these sponsors
who are kind of a special part
of what you do as well.
A lot of people keep happyy.
Yeah it is, you know,
but it's I think it's
a great way to look at it,
because to me,
the way that you enforce a brand
is really you're protecting the
good will associated with the mark.
And there's many ways that
you kind of look at that.
I mean, from the one perspective,
you don't want a third party to
affiliate itself with your brand in a
way that you don't authorize, in a way
that could cause your company harm.
And on the other hand,
you also don't want third parties
to commercialize your brand and
the fact that we have sponsor
considerations just built
kind of nicely into that niche at the USOPC.
We were able to enforce our brand
for our benefit and also to enable
these relationships to continue so
that we can continue to send Team USA
athletes to the games, train them,
feed them, all of that stuff that
enables us to have a very strong team.
Yeah. So like a number of brands,
it seems to me that
you all have fans,
and fans can become infringers,
but they're are different breed,
and it's not like a normal ...
What's been your approach to dealing with,
let's call them,
I mean some people call them unintentional
infringers, fan infringers.
That kind of. And because it's a great
question and it really runs the gambit.
On the one hand, we receive a lot of
proactive requests, which is great.
We have brand usage guidelines that are
public on our website and there's an email
address associated with those guidelines,
and so we do receive a lot of folks
who are trying to do the right things.
A lot of emails from people saying hey,
I would like to throw an event in my town.
I'd like to sell Olympic t-shirts.
Is this okay?
And it gives me an opportunity to
not only explain the why behind we
would ask that they not do that.
But it also kind of addresses the
problem before it happens, which is nice.
I mean, it's always more frustrating
to have to deal with these things
when they're already in the middle
of being launched.
So that's kind of like the first
way that we tend to interact with
fans as folks who are proactive.
But there's a lot of people
who aren't proactive.
And frankly Dave,
the vast majority of these
folks aren't intending,
they're trying to celebrate the games,
and it's just they're doing it in a way
that doesn't exactly work within our
brand structure and brand guidelines.
So we have to
you know, work with people at that
point to use marks or not use marks
in a way that is kind of appropriate
with how we utilize our brand.
Did you find that when you talk
to folks, companies we work with
had a similar issue and I found
that when we talked to people,
oftentimes they they were, they would say,
oh, gosh, I didn't realize
how that was
harmful to the brand.
I'd never intended to do that.
Do you get the same?
So much of that.
It's really common and
the requests, they really
span the board here.
I mean we get requests about
all different types of things.
I mean one of the most common requests
that I get is people who would like to use
our mark or a simulation of the rings or
a simulation of the agitos on apparel?
Oftentimes, Dave,
what happens is
there's someone's birthday party
or there's a summer camp,
or someone knows someone who's
going to the games and wants to make
a line of t-shirts so their friends
and family can support that athlete.
So oftentimes this really does fall under
the umbrella of fan engagement.
So we do try to work with folks and
have kind of clear brand guidelines
as to what is okay with our IP and
what we ask that you not do.
We do ask that folks don't put
our intellectual property on
apparel and shirts and the reasoning behind
this is similar to what I just explained.
We have relationships with sponsors and
licensees and we authorize them to
use our marks on apparel and clothing,
so we can't really authorize
third parties to do the same.
But understanding the
why behind it does help.
And a lot of people,
once they hear the reasoning behind
the no are very,
very quick to say, okay, I had no idea,
thanks for letting me know.
Yeah, which is great.
You're touching on something that I
find really interesting and something
that you know as I work through the
years started to pay more attention
to and that sort of this concept of
the enforcement philosophy
that you have as a brand or as
an organization. Tell us a
little bit about the
philosophy you will adopt or
how it evolves and and when you
are in the enforcement space.
Absolutely.
I mean my personal theory or or thoughts on
enforcement is that it serves a dual role.
On the one hand, you know it does
preserve the exclusivity of a brand,
but oftentimes to me, how you
enforce and how you communicate
your messaging also says a lot
about what your brand stands for.
So from our side,
as I mentioned,
a lot of people use our marks in a way
that they don't realize is not okay.
But they're doing it because
they're excited about the games.
They're excited that their
friend is a Paralympian.
They're excited that the Tokyo Games are
happening and it's out of excitement
and it's out of fan engagement,
so it's really a dual message.
On the one hand,
we really want to encourage folks
to to keep the spirit and the
enthusiasm for the games alive,
to celebrate that within their
communities and with their friends.
But at the same time,
we have to we have to monitor our
brand so that it's used appropriately
in these different capacities
and this can
show itself in
so many different
arenas, Dave.
I get questions a lot about people who
want to throw Olympic events who are
working at a company and internally
what they would like to do is
have an Olympic themed Q2
meeting with their marketing team.
These are things that we try to
work with people and we say hey,
we understand that this is not commercial.
We understand that you know this
is not something that
you're going out and selling,
but again,
these marks are preserved for our
sponsors and our licensees and we have to be
really careful how we authorize their use,
so we just ask people to move away
from our marks and move away from
events which may use the brands or may
put them on apparel or merchandise or
promotions or any of those things.
So it's a conversation that we
do have and we have frequently,
but I always try to start the
conversation with thank you so
much for your enthusiasm and
support for the movement.
Because I do believe the vast majority
of the time, that's where these
actions stem from.
Yeah, it sure makes, it sets a
different tone in an enforcement case
when that's how you're starting it.
So Dave, you mentioned that you
used to have fan engagement at
a company that you worked for.
How did you? How did you deal with it?
Well yeah you had people
who were huge, loyal fans of a brand.
I mean to the point where they would
tattoo it on themselves and you a
lot of times you just really,
we realized over time that there
were just a category of
people who were like you said,
fans who just didn't realize that
what they were doing was wrong
and they appreciated
taking a tone with them, that was like look,
we just need to stop it, and here's why.
And usually they immediately
realized it and that grew and grew.
So to the point where we realized,
alright, let's adopt
enforcement policies that are
related to that thinking by group.
Because every group has a little bit
of a different issue and it really,
I mean, it seemed to really help.
And every once in awhile you
know those things go viral.
And when you when you come out of it
with people thinking more of your brand
because of how you handled it.
Like you say,
it's not,
it's not just what, it speaks loudly about
who you are and what you're brand is,
so you know.
You're obviously
doing a good job with it because I
looked on various trademark bully
lists and you're not on them.
So you're obviously doing,
walking the right line with this and
then people are appreciating it.
Well, I'm going to take that as a win.
One of the things that I found
to be really helpful in the way
that you communicate things is,
I mean, this is just something that
I've found in life.
It's really hard to communicate
appropriate tone through email,
especially when you're asking
someone to stop doing something.
Even if you don't intend to,
you can sound angry,
you can sound directive.
So what I try to do is get people
on the phone as quickly as possible.
Typically, if I can
get folks on the phone
after one email exchange,
it goes much smoother. Now that
doesn't happen 100% of the time,
but I've noticed that I'm batting
better than average right now for
getting people on the phone and having
the result being something
that is not only resolved quickly,
but I feel like the person
on the other line felt
heard and respected because
that's very,
very important to us as an organization.
We want our fans to celebrate the games,
but we need to make sure that it's
done in the appropriate manner.
And you find that those people
tend to
tell you about all sorts
of other infringement.
You read my mind. Yes, that does happen,
so there's kind of two camps
here and I'm sure that you've seen the
same thing in your practice as well, Dave.
There's the first camp
which you call someone, and you say,
hey, we became aware of this issue.
I don't know if you know this,
but we own the mark Olympic
and here's kind of how
we're set up and the why behind it.
So we'd ask that you know, you
move away from this particular
promotion or whatever it is,
and you kind of get two answers.
The first is, okay,
I'm so sorry.
And the second is, yeah
but the guy down the road's doing it too,
in which case you know we have the
classic conversation of well
just because he's doing it,
doesn't mean that it's okay that you do it.
But please send me what you're talking about and
I'll look into it as well. So I get some of that.
I also get some of when I work
through something with someone, a
couple of months down the line,
sometimes people are like, hey,
I came across these things.
This might be problematic
and I'm thankful for that.
I mean, we can only handle the
issues that we're aware of
and it's something that we have to
approach on a case by case basis.
So when people send me any things
that they're concerned about,
sometimes it's not trademark
infringement, Dave,
but sometimes it is,
and it's something that we have to handle.
Do you find that you get athletes sending you
things that they've seen that they
kind of think maybe that infringes
or does it tend to be employees or
who tends to be one
of your big sources of information?
It spans the gamut.
As I mentioned,
we do have s legal IP email address that's
part of our brand usage guidelines.
So what usually ends up happening
is people who are reviewing
the brand usage guidelines,
which ends up being folks who
are trying to follow the rules.
Because if you're
looking up our brand guidelines,
you're trying to do it right.
They'll they'll send me a note asking
about something, and I'll say,
Oh well, no, we actually don't.
Some people just kind of keep an
eye out for anything that they
perceive to be a misuse of Olympic
properties and report it as well.
It really,
there are a number of different
ways that we find out about stuff.
Some of the other ways that
actually tend to lead towards a
quicker resolution are the USPTO
actually is one of the ways that
I find out about a lot of this stuff
because people
file applications for marks that
include Olympic or Paralympic or
a simulation of the rings and the
USPTO will refuse an application
if it deems that it violates
the Ted Stevens act.
It's kind of a statutory bar,
Dave, because it's a use requirement
and without our authorization,
a third party is not
supposed to use those marks,
so it's a good thing at the USPTO
to get those flags because sometimes,
especially maybe if these conversations
are a little bit more challenging,
if the person on the other end of the call
doesn't necessarily agree with
me or whatever their perspective
maybe to not only hear it from me,
but then to also get a refusal
from the USPTO sometimes kind of
drives the point home of like okay,
it's not just the USOPC that's saying this,
it's the USPTO. Right.
And I think a lot of practitioners,
until you bump into the Ted
Stevens Act for some reason,
you may not know about it and so ...
You're right that.
I mean,
I remember this is a little embarrassing,
but I remember it was about two months
before I applied for this job at my
old firm and there was a client that
wanted some sort of thing that could
have been a simulation of the rings,
and I thought, ah,
how does Olympic IP, this is before
the job was posted and I was like,
oh no, that's not going to work.
Those are not enumerated in the Act,
nor is our Team USA brands.
So these are
things that are not
covered under the Act and like every
other trademark owner out there,
we file federal trademark
applications for them.
And we pursue those marks
through the Lanham Act.
So we do have a number of marks that
are covered by the Ted Stevens Act
but we also have a number of
marks that fall under the
typical confines of the Lanham Act.
So that's how we kind of go about
securing and protecting those.
There is a part of the Ted Stevens Act
that includes a provision that
authorizes the USOPC to file a
civil lawsuit for unauthorized use
of
you know the enumerated terms or of
any trademark, trade name,
sign, symbol or insignia falsely
representing association with
or authorization by the IOC,
the IPC, Pan American Sports Organization,
or the USOPC.
So in many ways, marks like
Tokyo 2020 and Team USA
are affiliated with USO PC and
the games and are associated with us,
so there is that part of the
Ted Stevens Act which does provide
that additional civil recourse.
So you actually provide help
on that front in the US
even though Tokyo 2020 is
not necessarily a mark you all ...
That's right. That's interesting.
So that leads me to two questions about
interesting things about the act,
given that there is an enormous
part of the US that goes
under the name of the Olympics,
Olympic Mountains,
and one of those is I had heard one
time that there was a grandfathering
in at the time the act was passed.
Can you talk at all about that
limitation or how
that works? Absolutely.
So when the Ted Stevens Act was passed,
they included some language in there to
grandfather in prior rights and so this doesn't,
this doesn't kind of
address the geographic question,
but there's kind of two parts that are
grandfathered in in this particular case.
The first is pre-existing rights for folks
who have used some of the terms that are
delineated in the act prior to 1950.
And what the access is
you know people who have been
using those specific marks
prior to 1950
may continue doing so pretty
much in the same capacity,
so you know that that definitely
does apply in some instances,
and there are some companies that
fall under that grandfatherered in basis.
The second part is the geographic
scope of which you just mentioned.
So in Washington state there is an area
west of the Cascade Mountains that can
geographically be referred to as Olympic,
and so the act has a carve out for that
particular region of the US as well.
So if a mark includes the term
Olympic and the business associated
with the mark operates within
the state of Washington,
West of the Cascade Mountain range
then the use of Olympic can be
considered in that specific case.
There are some limits on that
particular geographic carve out.
For example,
the goods and services sold by that
business must be within the state of
Washington and sales, marketing, operations
outside of the area cannot be substantial.
So as you can probably guess,
it's usually leaves some questions to
people who fall into this carve out.
Especially with regard to
things like websites,
things like you know,
I'm running a business and I am
running a local sightseeing business
West of the Cascade Mountains,
but we do have folks coming in from
out of town and I'd like a website,
because I'd like people to
book reservations on it.
So this is something that you know
we do evaluate on a case by case
basis and we really kind of look at
whether the brunt of the activities
are within the state of Washington,
or really,
whether it's a national
company that just happens
to be headquartered west of those
cascades. Gotcha. So what happens though
in a corporate transaction?
If somebody is acquiring one of
those grandfathered companies,
either geographically or
from a time period.
How does that
play within acquisition?
So the act does specify a situation whereby
if you assign your grandfathered in rights,
your rights that existed prior to
1950, the assignees who offer
the same goods and services,
and that's important,
are also grandfathered in under the act.
What we see sometimes is people
changing up their business model,
expanding the scope of the goods
and services that they offer.
One of the things I also
have seen a little bit of
is when there hasn't been an
assignment of rights Dave,
but rather when there's just been
sort of a license of those rights.
So if an entity that's
grandfathered in has its rights,
and let's say for example the term Olympic,
and you know is still operating
within the same goods and services
that it has always operated in.
Sometimes I've seen situations where
that entity says to a third party,
oh yeah it's good,
you can just use my mark in
this other capacity and
that's really something
that we do push back on and
it has to be.
The act authorizes an assignment,
not not a license.
So it's one of these things where you know
we do look at it at a case by case basis,
but it's,
it can be challenging,
especially if people want to
expand the business model to a
different scope, that that may fall
out of the grandfather clause.
Yeah, it's such an interesting aspect
because it's just not something that most
people are dealing with in a transaction
or most brand owners don't have that
kind of situation to deal with, but
let's turn to the word Olympian
and kind of the people,
an Olympian, someone who competes and
is that covered by the act as well?
So the act does cover, you know,
simulations of certain marks,
olympion in and of itself is
not called out by the ac.
Olympian is a simulation of Olympic though,
so we do use the Ted Stevens Act
with regard to that particular term.
But you sort of just identified the
balance here with the term Olympian.
It is on the one hand,
if it's used as a brand,
if it's used in a commercial entity,
it could be something that may
infringe on the rights of the USOPC.
But on the other hand,
if it's being used to describe a person,
that description could very well be in
a biographical manner, that's factual.
So we try to strike a balancing
approach here.
For athletes that are Olympians
or Paralympians,
if they refer to themselves in a factual
manner as an Olympian or Paralympian,
we ask that that reference
be made in a balanced way.
So what
that kind of means is other achievements
or other accolades are listed.
So, for example,
this athlete in question could
say Olympian, world champion,
mother of three,
or something along those lines
that talk more about the person.
And so that particular promotional use
is not something that feels like it's
trading off of Olympic IP quite as much.
It's almost kind of a
thinking along, it's sort of a fair
use way of somebody who says yes,
I worked for so and so,
it's factually accurate.
So does it ...
How then does this connect with
the sponsor world?
Because there's clearly sponsors of
the Olympic movement in international
level, at the US level, etc.
But athletes also have
have their own sponsors,
which is how they can afford to
get where they are,
where they're going, a lot of times,
how does that dynamic work between
athletes and their sponsors?
Personal sponsors,
especially as you're kind of
heading into that world right now.
Yeah, so again really are big question here
is trading off the
Olympic good will by a third party
who is not a USOPC sponsor.
So you know,
oftentimes we do work with athletes
and their personal sponsors on
campaigns that include a factual
reference to an achievement.
But we ask again that that
approach be balanced.
So if a company is sponsoring
an individual athlete and that
athlete is an Olympian or Paralympian,
describing that achievement in a
factual way is something that we
do work with them on and we try
to work on campaigns proactively
so that other achievements are
included and the trading off the
Olympic good will thing just doesn't,
it doesn't feel like the
company is trading off Olympic good will or
associating themselves with the USOPC.
Yeah, it's a fascinating thing because
you see this especially I would
guess, the closer you get to the games,
those individual sponsors want to
be able to acknowledge their
connection to this athlete and etc.
And I understand there's something
called a diocese level called Rule 40.
Yeah, there is.
I'll get to Rule 40 in a second.
I just wanted to
if you don't mind touch on one
other aspect that we do see,
kind of the Olympian, Paralympian
biographical reference piece being
used quite a bit and that's
really in the world's of fundraising
and other third parties kind of using
speaking engagements or fundraising
opportunities whereby athletes
are participated,
participating or part of these
organizations and part of the fundraising,
you know,
is going to reference that the
athlete is an Olympian or Paralympian.
It's a very similar analysis
in this one, Dave.
We ask that fund raising initiative
so they don't trade off USOPC
good will. Also lists kind of
the athletes achievements in a
balance matter and not
otherwise USOPC IP.
So it comes in
a whole bunch of different ways
and it's probably one of the more
common questions that we see.
Oh, I would think so,
especially because the pool of athletes,
so to speak,
of Olympians just
you know grows constantly and changes
etc. and as the world around them
changes and organizations want to
be involved, it must be
never ending. Do you ever feel like
you've seen all the situations and
then you're constantly reminded you haven't?
Yes,
actually I do.
I mean like I can think of one the
other day where I was like oh my gosh,
I didn't even know that this could
happen but you learn every day and
the beauty of this is that again
most people are using our marks
in a manner because they are
excited about the games.
So a lot of times you can get
people to shift their perspective
or shift their engagement.
Given that,
given that they're excited about
the games and they really are
trying to do the right thing,
we get a lot of requests from
educators and from summer camps,
people who want to put on
educational materials, teach kids,
teach community members about
Olympism, about sportsmanship,
about the games, the history of the games,
Olympic values.
A lot of those requests and there are
also ones that we work with people on
if it's a non commercial,
educational request and there's
no third party sponsors.
We do, in cases,
authorize certain USOPC IP to be
used in that educational context.
There are some guiderails around there.
We would ask that you know such
educational materials not be published
or available in certain media,
but educating and promoting and
spreading the goodwill of the
games is something that we
do really want to encourage.
So you do see a pop up and sort of
other facilities where people are just
excited and trying to do the right thing.
They want a summer camp and
it's just so perfect because
the Tokyo Games are this summer,
so why wouldn't you have
Tokyo 2020 themed summer camp?
A lot of this stems from excitement.
Yeah, I think the way you
approach it also combined
with that theory is going to make
it a whole lot more efficient to
kind of do the things you need to do
and we always try to say if
you can come away from these things
where the person you're dealing with,
is still a fan,
but maybe even more of one, it's
a win. That I consider to be a
win as well, and you know it's
never fun to have a conversation
with someone and this especially
comes into play, Dave, with regard to
businesses who have been using names
such as Olympic for awhile.
There are some out there that we
just didn't know about and sometimes
it crosses my desk because someone
writes an email and says hey,
is this use of Olympic authorized and
sometimes it crosses my desk because
someone filed a trademark application.
Sometimes it crosses my desk
because they filed for a local
business license with the Secretary
of State and some of those state
secretaries reach out proactively
and say hey is this authorized?
Is this something that's allowed?
Those conversations can be
really challenging,
especially if that business has
been around for 10 years and
we just didn't know about it.
So it's something that we really have
to work with people and do so in a
thoughtful manner to make sure that
not only our assets are protected,
but that we're also hearing them and
working with them in
ways that you know at least they don't ...
The entire process
of transitioning a brand, Dave
as you know, is not fun,
especially an established one.
So you know it's working with people
to try to make that a little bit more
that process go a little bit more
smoothly and kind of realizing some
of the considerations
that may arise.
So some of these conversations
can be really challenging.
It's not always people who are
happy to get off the phone with me,
but I think at least from my perspective,
if we can explain why we're
doing it the way we're doing it,
and if we can keep,
you know if the conversations are respectful
and they're empowering, they're enthusiastic.
I think that.
eventually, a lot of people,
people do feel a little bit
less upset about the message,
at least is my hope.
Yeah,
well I could,
I think it does and I think you've got
a good approach ecause it's
a very delicate situation because you're
not just like a normal commercial brand.
In many ways, I mean it has this enormous
history first of all, and then it
has this international aspect to it.
And then it has all of these
aspects of, it's part of our,
especially on the US side,
it's part of our country, so to speak,
and people do tend to feel very part of that.
And we saw it sometimes on the brand I
worked for. It was part of people's lives.
You know it was there
when they got married.
It was there when they had their first child,
you know it
just it becomes that connection
and I think you know it's
challenging to walk that line.
You seem to do it really well.
It is challenging
but it's something that I think is
really important and I think it's
something that you know we've all heard
trademark bully stories.
I hate the word bully when
it comes to trademark,
It's something that terrifies me.
it's something that you don't,
you don't want to be associated
with that term personally,
and you don't want your brand to
be associated with that term.
The most important thing to me is that
you know when I reach out to people,
I see myself as an offshoot
of this brand,
as someone who's you know,
protecting and supporting the brand
in the way that the brand should
be protected and supported. So we do
try to do so with care and concern
for the people that we're talking to
and to engender enthusiasm and
continued support for the games and
for Team USA. Yeah, it's
amazing. We touched on
this and I'm glad you stayed on this
topic so we could talk about it more fully.
But there's this thing I wanted
to get to about this
Rule 40 that I never understood and
I'm curious about it and how it impacts
what people do and the purpose of it.
Because you do hear about it and I think
there may be a lot of misconception about it.
Yeah, sure,
absolutely.
So Rule 40 is a rule in the Olympic Charter.
And okay I'm going to back up even a
little bit more. Around games times,
as we discussed before,
USOPC sponsors, so Team USA
sponsors, domestic sponsors and
Olympic and Paralympic top sponsors
are authorized to use USOPC
intellectual property so that could be,
you know Team USA.
It could be the rings,
it could be Tokyo 2020.
It could be the agitos.
You know a variety of USOPC IP
those sponsors are authorized to use.
On the flip side of that equation,
non sponsors are not authorized to
use those brands and so that is
a truism regardless of whether
it's game time or not,
but as I'm sure you can imagine,
during games times there is an uptick
in people who are using the brands,
especially people who don't know
or appreciate that the terms
Olympic and Paralympic are brands
and there our brands.
So that's kind of one piece,
so there's there's one thing
to consider during the Rule 40
period is the use of USOPC IP,
and this is again despite the Rule 40 period.
Sorry, but it is not authorized
commercially for a non USOPC sponsor.
So that's one piece of the
puzzle. Rule 40, as you mentioned,
is a rule in the Olympic Charter.
It's called the bylaw to Rule 40
and this can affect campaigns
run by what we call an athlete
personal sponsor.
So a sponsor that's a sponsor of an
athlete but not necessarily or not a
sponsor of USOPC in this particular case,
the Rule 40 period is for
a set period of time.
Typically it runs about 10 days
before opening ceremonies and two
days after closing ceremonies.
It's about the time that the Olympic
Village is active and there's a parallel
to Rule 40 in the IP for the IPC.
So for the Paralympic Games as well,
there's a parallel that exists
there. And what Rule 40
does is it sets certain guidelines
for how a participant's name,
image, and likeness can be used
during this Rule 40 period.
This particular rule applies
to all current competitors.
So again,
if you're not currently
competing in the games,
the Rule 40 period and the Rule
40 regulations don't apply,
but it applies to all competitors,
coaches,
trainers and officials who are participating
in the Olympic Games and in general,
what it really kind of means is that ...
Or let me actually just
say what Rule 40 says,
because that can probably put
a little more clarity on it.
So Rule 40 states that competitors,
team officials and other team personnel
who compete in the Olympic Games may
allow their person, name, picture,
sports performances to be used for
advertising purposes during the games
in accordance with the principles
determined by the IOC Executive Board.
So,
the IOC Executive Board has determined
its principles and in the US we have
taken those principles and created
some domestic guidance for Team
USA athletes and for athlete
personal sponsors who intend to
activate in the United States
during the Rule 40 period. At its
heart, Rule 40 is an eligibility
rule introduced by the IOC for the
purpose of maintaining the unique
and universal competitive environment
offered by the Olympic Games.
So the rule helps ensure global
protection at the games and helps
maintain the long term health
of the movement, but
as I mentioned in the United States,
we've kind of taken a different
approach to it this year rather
than what we've done in the past,
and I'm excited about this.
So there's a new approach.
So there is.
So we have created in the US what is
called a personal sponsor commitment.
So what this does is there is a
portal on the USOPC website, on
the Team USA website, whereby
athletes and personal sponsors
can enter into a personal sponsor
commitment through that portal.
So basically what this means
is that an athlete can go in,
can indicate his or her personal sponsors
and those personal sponsors can
then, with the athlete,
execute the personal sponsor commitment.
The personal sponsor commitment is
something that we've developed in
the United States and it sets out
clear guidelines for what these
athlete personal sponsors can and
can't do during the Rule 40 period,
including picture examples which
I've actually found to be some of
the most helpful of all the examples.
That when you can see a picture
of how something operates,
it's great.
But anyway,
so this new system allows current
Team USA Partners and official Olympic
and Paralympic partners to maintain
their exclusive marketing rights
and to gain enhanced protection
for enforcement while at the same
time the system makes it easier for
athletes to engage in marketing
by allowing these athlete personal
sponsors to obtain permission to
use athlete images pursuant to these
guidelines that we put forward in
these personal sponsor commitments.
So that's kind of the system that
we're hoping to implement.
We're hoping that it can be a fair
and understood system at the outset,
and that this process creates a shared
responsibility among personal sponsors
and athletes through this
contractual mechanism that we
hope will not only protect
USOPC sponsors and the games themselves,
but will also allow a streamlined
process for athlete marketing
in the United States.
Well,
it's gotta be immensely helpful
for everybody involved,
because there's a place they can go to ...
We used to get questions,
so and so authorized to do ads and
it's far easier to be able to look like,
oh yeah, they're a sponsor,
it's okay or well, yeah,
they're sponsor,
but check with Dana or just having
that resource of information has
gotta be useful and just some
of the predictability in it,
especially given the size of sponsors of
athletes versus sponsors of the whole team,
you know etc.
Yeah, so I mean our
hope is that this will be a
streamlined process.
Our hope is that this will make
things easier and clearer.
We are really trying to have things
be clear in a straightforward manner,
which is why we have brand usage guidelines,
which is why we're trying to do this process.
The more I think,
the more precise and the more succinct
that we can be in our communications
that are available online into the public,
the easier this is for everyone and
the more enjoyable. No one wants
to hear from me during games time.
I know that my phone call
no one wants to pick up, so I mean,
if we can, you know,
kind of sidestep that process,
I think that it would be a
lot better for everyone.
Oh yeah, absolutely.
I gotta ask you a question because
you used this word a couple of times
and I racked my brain to think if
I'd ever heard it in all the time
involved in marketing and design peope.
You used the word agitos?
Oh okay, yes, so the agitos.
So the Olympic rings are the symbol
of the Olympic Committee and
the agitos are the symbol of the
International Paralympic Committee.
They exemplify spirit in motion
and they are also protected by
the Ted Stevens Act.
Interesting, okay
gotta add that new word today.
Yeah so,
in the United States we're a
steward of that brand as well.
We protect and enforce
that brand in alignment with the
International Paralympic Committee
and their guidance.
I saw one question come through, Dave,
that I wanted to touch base on and
it had to do with international
issues and jurisdiction, and I think
that this is something that a lot
of folks may not appreciate or know.
So our jurisdiction
at USOPC is the United States.
Every country that competes
in the games has a national
Olympic committee and that national
Olympic committee,
we are a national Olympic committee,
that national Olympic committee
enforces the rules and
regulations of the charter as well
as intellectual property,
and their particular jurisdictions.
So my job is very US based,
which is so different from what
I was doing before I came here.
But it creates also kind of an
interplay with the NOC's. If we
find out about something that seems to
be problematic in a different territory,
we don't do anything about it,
but you can flip it to Canada or
Australia and they can handle
it appropriately with regard to
their statutes and their laws.
That's actually one of the things I
was going to ask you about because
there's gotta be a Dana in every
country on the planet that does what you do.
But do you tend to go and work,
you know your Canadian counterparts,
so you go back and forth?
Or do you tend to go back and forth
with the people in Geneva or whatever?
The IOC brand people are,
how do you orchestrate that?
The vast majority of my international
conversation are with the folks in
Laussane, the International Olympic Committee,
with regard to things that they
see in the US or, you know,
questions that we might have with
regard to various Olympic properties.
I've touched base with a couple
of the other NOC Danas
I think, just kind of to see how
they're doing and what they're up to,
especially during COVID,
so that's been nice and refreshing.
But no, there's not really
as big of an international,
at least our jurisdiction
here is in the United States.
And so that is really
where I protect our brand.
And that's really the market that
I'm focused on. Do you,
you must have a big team.
Or do you have a very lean team
that relies on lots of outside help?
Or how do you
manage all this workload?
Because it's got to go up and down just
in swells because of when the games are
and that's gotta be a huge challenge.
And it really is. So, our legal team at USOPC,
I'm the only intellectual
property attorney per se.
My partner USOPC,
she handles kind of our marks
in the commercial space,
so we kind of split this one in half.
But we work routinely together all the time.
You know, day in and day out because our
lives crossover so commonly in the space.
But during games times you know we do
have a couple of other folks that help out.
I am,
I actually think that I'm going to have a
decent amount of help during the games and
well, this is the first one that I have
been a part of. I'm very,
very excited to be a part of it,
but Dave,
it's one of those things I don't know.
We're going to see what the volume is.
I mean, we're going to
see what the volume is.
I will see if more Danas
are needed in the future.
Yeah true,
but does that mean during the
games you would go to Tokyo or
you would stay here because the
work you do is more focused here?
That's exactly right.
So during the games, as you might expect,
is one of our biggest times where
people use our marks and you know again,
oftentimes in a celebratory manner.
But there are things that we
need to address in real time
on the ground.
So, me and what I call my kind of
the folks who are helping me with
protecting our brands during the
games time, we are located in the
States and we are going to work to
protect the brands and field people's
complaints and field inquiries and
handle takedowns and handle conversations
where we're asking people to
transition off of a mark.
So that particular part of our team
will be focused in the United
States during games time.
Yeah, it's gonna be a busy time I think.
So you had mentioned there's a
number of materials on the website.
Which website are you talking about?
The USOPC?
So it's Team USA, that's our website,
teamusa.org, pretty sure.
Eek, I should know that.
Yes,
I'm pretty sure it's teamusa.org,
but one of the things that I would
really encourage people to look at
our their brand usage guidelines.
We really try in those guidelines
to address a lot
of the questions that
we get on a daily basis.
For example, one of those guidelines
includes questions about artwork.
I get fan art all the time
about the rings and the agitos,
and new brands that people want to create.
It's inspiring that people are
inspired by our marks, but we
can't authorize simulations
of our brands and we're going
to ask you not to use it too.
So it's something that you know we try to
really be clear and succinct
on our brand usage guidelines
to give people guidance.
And then, as I mentioned,
my email or the legal IP
email address is on there.
So if you have a question after
reading the brand usage guidelines,
please feel free to reach out and ask.
We're happy to respond.
There's also the Rule 40 portal.
If there are any athletes or any personal
sponsors who are interested in that
program and haven't looked into it yet,
that's also on our website on Team USA.
There's a link to it and there's
also materials associated with it,
so you could access some of the pictures and
reference materials that I touched base on.
That's really helpful having those things.
So hey, listen, we kind of
of chewed up most of an hour here,
and it's been a fascinating conversation.
It's such an interesting area.
What you do is so interesting.
It's so timely and it's such a huge
issue in the sports world for people.
So thank you so much for joining us today
and we'll look forward to watching
you Olympics and that type of thing.
Thank you so much for having us,
it's been a pleasure.
Yeah, some day it'd be nice to do it
in person and actually have a fire
for the Fireside chat. I was
waiting for that graphic to come up.
Yeah, they couldn't figure that one out,
but it is easily here.
So anyway,
thanks Dana so much.
Have a great weekend and at this point
I want to bring into the conversation
Cara Duckworth, who is the
Chief Communication Officer for the USPTO.
Hi, Cara. Hi, Dave.
Thank you so much, Dave and Dana.
Wow, what a wonderful
and enlightening and incredibly
timely conversation.
I mean,
thank you so much for sharing all of
that wisdom today with our audience.
What a great way to sail into our weekend.
Like Dave said, I'm Cara Duckworth,
I'm Acting Chief Communications
Officer at the USPTO.
I'm sure there are many people
tuned in who did so because of the
Olympic and Paralympic brand.
You know exactly what it is, you know
the Olympic rings, the Paralympic agitos
and what that stirs in you. We're all
connected by the excitement we feel
surrounding the games and I know I
can remember as a young kid growing
up glued to the TV with my family.
Like so many families watching the games,
cheering on the American team feeling
such a sense of pride and wonderment.
I look forward to doing that
again in July with my family.
So the US Olympic and Paralympic
Committee is really a true
steward of this important brand
and all of all that it represents.
There is a lot of value
in that and brands matter,
trademarks matter,
and protecting them as Dana and
Dave discussed today, matters even more.
I hope some folks who tuned in today
are inspired to perhaps create another
Olympic size brand to earn the trust
of the public to provide so much value
to communities the way USOPC does.
And as Dave mentioned and Steve mentioned,
USPTO will soon be launching our sports
and trademarks campaign, so stay tuned for some more
great information about the importance
of trademarks in the sports economy.
Please follow us,
@USPTO on Twitter, on Instagram,
on LinkedIn and Facebook for more updates.
And finally, this year marks the
75th anniversary of the Lanham Act,
the primary federal trademark law in
the United States and we have a few
upcoming events to mark the celebration,
including one next week,
which will feature remarks from
Dave who you heard from here today,
as well as Secretary of Commerce
Gina Raimando and
Andrew Hirshfeld performing the functions
and duties of the USPTO director.
So please visit our website at
www.uspto.gov and check out our
public events on our home page.
And for more information on trademarks
and how to register a trademark
and protect your trademark,
check out the trademark basics
page of uspto.gov.
Thanks again and have a wonderful weekend.
Thanks everyone, thanks Dana.