Puma's 'Tokyo 2021' Trademark Rejected By USPTO

By Bill Donahue
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Law360 (May 6, 2020, 12:33 PM EDT) -- The U.S Patent and Trademark Office is refusing to register "Puma Tokyo 2021" as a trademark, ruling that consumers would "clearly" think it was connected to the Tokyo 2020 Olympic Games that have been postponed due to the coronavirus pandemic.

In an April 24 order, a USPTO examiner said the application — filed by Puma SE on the very same day that the games were postponed until next year — would falsely suggest a connection with the Olympics and the U.S. Olympic Committee.

"The use of the wording 'Tokyo 2021' contained in the proposed mark would be clearly seen by the general public as referring to the Tokyo 2020 Olympic games that have been rescheduled to 2021 because of the COVID-19 pandemic," the examiner said. "It should also be noted that the current application was filed on the same day as the announced rescheduling of the Tokyo Olympics."

The order is preliminary, and Puma can still file new arguments to try to persuade the examiner. If the application is later formally refused, the company can appeal the ruling to the Trademark Trial and Appeal Board.

The decision came exactly one month after the International Olympic Committee announced on March 24 that the Tokyo Games, set to kick off in July, would be postponed over the outbreak of COVID-19.

Later that same day, Puma applied to register the "Puma Tokyo 2021" phrase, in standard characters, as a trademark for apparel, footwear, accessories and sporting goods.

An application that clearly referenced the Olympic Games was unlikely to be approved, so much so that it left trademark experts wondering why a sophisticated brand owner like Puma was picking a fight it was almost certain to lose.

In rejecting Puma's application last month, the USPTO examiner cited a 1999 ruling by the Trademark Trial and Appeal Board that refused to let an unauthorized third-party register "Sydney 2020."

"The [TTAB held that] the general public would recognize the phrase as referring unambiguously to Olympic Games to be held in Sydney, Australia, in 2000 and the entire organization that comprises Olympic games qualifies as an institution," the examiner said.

Puma's trademark was also refused for another reason: It was confusingly similar to a "Tokyo 2020" trademark registered by the U.S. Olympic Committee.

"The applicant has simply added the house mark 'Puma' to the nearly identical wording in the registered marks," the examiner said. "Accordingly, in the present case, the marks are confusingly similar."

Puma declined to comment.

The U.S. Olympic Committee is not involved in the case; the application was directly rejected by the examiner without a request from USOC.

Puma is represented by Anne E. Naffziger of Leydig Voit & Mayer Ltd.

--Editing by Marygrace Murphy.

For a reprint of this article, please contact reprints@law360.com.

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