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Law360 (March 30, 2020, 9:20 PM EDT) -- Puma's bid to register a trademark involving "Tokyo 2021" — seemingly a reference to the postponement of this summer's Tokyo Olympics — is likely a legal no-go, experts say, thanks to the broad rights controlled by the game's organizers.
Filed the very same day that the Tokyo Games were moved to 2021 due to the coronavirus pandemic, Puma's application to register the trademark "Puma Tokyo 2021" is almost certain to draw opposition from the U.S. Olympic Committee, a notoriously strict trademark owner.
The application left trademark experts puzzled, wondering why a sophisticated brand owner like Puma was picking a fight it was likely to lose.
"It is very likely the USOC will ask Puma to reconsider this application," said Josh Gerben, the founder of the Washington, D.C., trademark boutique Gerben Law Firm PLLC, who first reported Puma's application on Twitter.
"If an opposition is filed, I believe the USOC would have a strong case," Gerben said.
Puma applied for the trademark on March 24, seeking to register the words "Puma Tokyo 2021" as a trademark for apparel, footwear, accessories and sporting goods. The application was made on an "intent-to-use" basis, meaning Puma doesn't yet need to show exactly what the mark will be used on.
The timing was notable, to say the least.
On the same day that Puma filed the application, the International Olympic Committee and the Japanese government announced they would postpone this summer's Tokyo Olympics due to the spread of COVID-19, which has sickened hundreds of thousands around the globe. The group has since announced that the games will now start in July 2021.
On Monday, a spokeswoman and an attorney for Puma did not return requests for comment on why the company sought to register the phrase.
Whatever the intention, if Puma's application wasn't authorized by the USOC, the shoemaker is likely to hear about it.
Over the years, the group has taken an aggressive stance on trademarks — doing things like sending threats to a Greek restaurant called Olympic Gyro, battling with a small newspaper from Olympia, Washington, and warning nonsponsors against using hashtags like #Rio2016 on social media.
That approach is aided by the Amateur Sports Act of 1978, a statute that grants the USOC broader powers to enforce its trademarks than a private brand owner. In 1987, the USOC won a ruling at the U.S. Supreme Court that Olympics-related trademarks aren't constrained by some of trademark law's traditional limits.
A representative for the USOC did not immediately return a request for comment on whether it had authorized Puma's application.
As it does before every Olympics, the USOC spent the last decade acquiring a series of U.S. trademark registrations for "Tokyo 2020," covering a vast range of goods and services. The group also owns registrations for "Tokyo Strong," "Road To Tokyo" and several different logos.
In the days since the games were formally delayed, the USOC has not applied for any "Tokyo 2021" trademarks, but that's likely by design. In the postponement announcement, the event's organizers made a point to say they would keep using the "Tokyo 2020" name, despite the delay.
But even without those specific registrations, experts say the USOC would likely win any dispute with Puma over the "Toyko 2021" mark.
For one, the USOC could argue that the name is confusingly similar with the registrations it already owns for "Tokyo 2020." Even if the event hadn't be rescheduled, the committee would likely have objected to a third party applying to register something so similar.
For another, the organization could claim more broadly that that any pairing of an Olympic city name with a year would create a false association with the event — let alone one that's the actual rescheduled date of the games. In past years, only the USOC itself has succeeded in registering such combinations for its games.
"I think it is safe to say that Puma 'jumped the starting gun' with this filing," said Peter S. Sloane, the chair of the trademark group at Leason Ellis LLP. "A 'Tokyo 2021' mark makes a clear association with the now rescheduled games."
--Editing by Aaron Pelc.
For a reprint of this article, please contact reprints@law360.com.
