A few days ago I received an email that sent my heart to the bottom of my stomach. It was sent from Authentic Brands Group (ABG) – the company that owns the popular MMA apparel brand TapouT. It’s not that I wasn’t expecting it (I was the one who proactively reached out to them), I just wasn’t expecting the response therein.
To get you caught up: In early June a vendor raised concerns about our similarity in branding to TapouT. He wanted to work with us but didn’t want to upset his existing relationship with TapouT. I was confident that we weren’t infringing, but to avoid any issues going forward I wanted to get something in writing that gave us the okay, from TapouT, to continue as Tap Out Cancer. I sent multiple emails to ABG letting them know that we are in existence and wanted their blessing, but for the last 1.5 months, I heard nothing. So I went along with the business, ordering merchandise, growing the Facebook community, organizing events, etc.
On Monday night I finally received an email back from ABG, the gist of which is contained in these two paragraphs:
While we applaud your work with charitable causes, we unfortunately cannot grant permission for this use of our federally registered trademark. In addition to owning a stylized mark which you mention you tried to distinguish yourself from, we also own the word mark.
For your information, this use of our trademark in your business name is, in fact, and infringement of our intellectual property rights, including, without limitation our trademarks. It is not our desire to cause you any undue expense in connection with this matter in light of your organization’s goals. As such, we are willing to settle the matter with you at this stage if you can agree to: immediately cease and desist from the use of the trademark TapouT in any and all domain names, corporate names or otherwise, including by transferring the domain name to us.
Now, I understand business. This was not a legal document (though it’s likely I’ll receive one if I don’t act soon) and it only claims legal right to their trademark. No matter who it is, whether they’re actually infringing upon TapouT’s trademark or not, TapouT’s counsel will undoubtedly reject any request. It’s their job to police their brand and ensure it’s never diluted. That doesn’t mean they’re right, morally or legally, but I understand why they’d want to protect their brand. One could lead to many, so they don’t want to allow even one.
Though let’s make it clear – I was not asking to use their brand name. I was simply making them aware of us and wanted something in writing I could show potential business partners who worried about copyright/trademark infringement.
I was angry, sad, scared, and unsure of how to proceed. I talked to various people today looking for advice. I received a number of different ideas of how I should proceed, though none of which relieved the heartache.
The plain truth is that we’re a tiny nonprofit. My wife and I run it out of our home while each juggling two other distinct professions (that’s 5 jobs for those scoring at home). We have invested thousands of dollars of our own money to get Tap Out Cancer off the ground, including incorporation fees, web design, branding, and of course, purchasing merchandise. We have recouped some of it through public donations and sales of our t-shirts (thank you!), however we haven’t even raised enough to even pay our initial investment back. That’s not to say we weren’t progressing – that’s just the state of the company right now.
In other words – whether we’re right or wrong; win or lose – we don’t have the funds to fight TapouT. I wholeheartedly believe we would win a court case. I did research trademark law on my own before naming the company, and our name structure, spelling, company structure, and logo marks are completely different. However, TapouT will tell any brand name that even resembles their own to heed or prepare to drown in legal bills, and the names, audience, and revenue structure (namely t-shirt sales) are similar enough that they could make a case.
We could wage a PR war, but there’s no guarantee that TapouT would even care. Reputable media outlets covered the fiasco when Susan G. Komen for the Cure went after every other charity that uses the phrase, “for the cure” and even claimed ownership of the color pink. They used over $1,000,000 of donor funds to take these other charities to court. However, in the end, regardless of the negative PR, the smaller charities had to give way.
I’m starting to come to peace with the fact we’ll probably have to rebrand. It’s still sad though. Every time I see the logo – my cell phone background, the Facebook page, the shirts that fill our guest room – I know it’s only a matter of time before its gone.
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