ABG forbids tapoutcancer.org from use of TapouT trademark

source: tapoutcancer.org
 

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.

My Reaction

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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Recent Comments »

SamboMMA site profile image  

8/29/11 9:25 AM by SamboMMA

Thanks. Skrape would have come out alot better if he said they had intend on contacting the charity to come to an arrangement instead of his usual juvenile responses.

Hootiewho site profile image  

8/29/11 2:50 AM by Hootiewho

A little ego centric? I am sure everyone is like you and had they just marketed to you that they would have maximized their contributions. This is as ridiculous as Paris Hilton trying to copyright whatever cunty saying she used to use. If they said Tap Out two words, that is an expression used world wide. The TapouT logo is proprietary yes. Is Rogan going to have to pay the company every time he uses the phrase tap out? This is charity referencing an international symbol of victory. And this is especially douchey since TapouT is a total rip off of the everlast font. In the end, any publicity is good publicity to some, and look how much time was collectively spent on their brand from this thread to all the others.

asn site profile image  

8/27/11 9:16 AM by asn

well according to the US Patent and Trademark Office, TapouT when associated with a facet of the business they are in, in this case grappling,is a registered trademark/name and not just a verb. Rush is a verb, so I guess I can start a band and call it Rush and I'll be ok.

leftlegtrumpcard site profile image  

8/26/11 6:05 PM by leftlegtrumpcard

^^good post.

MMAxNate site profile image  

8/26/11 4:26 PM by MMAxNate

Update: August 26, 2011http://tiny.cc/4mrxtJon Thomas:Today, along with one of our Board Members, I spoke with the President of Authentic Brands Group as well as PunkAss, CEO of TapouT. While I am not at liberty to discuss specifics, I am able to tell you that our discussion was very productive and I’m happy about the future of our nonprofit endeavor. Whether our branding changes or not is yet to be seen, but I do know that TapouT has been very respectful of our needs and concerns and are genuinely trying to help this ordeal come to a conclusion that results in both of us happy.I know there has been a lot of heat brought on TapouT because of their necessity to police their brand regardless if the offender is a for-profit or non-profit. Their actions were understandable from a business perspective (they risk losing a LOT if they turn a blind eye to it), disheartening from a moral perspective, and very blurry from a legal perspective. They did apologize for the manner of which they initially contacted us and I wholeheartedly accepted it. So as we work with TapouT to put this behind both of us, I will ask that our supporters be respectful of their brand and avoid any straightforward attacks or mudslinging. I’m not trying to put a muzzle on free speech or your ability to voice your opinion. Simply, if for no other reason than to help our organization succeed, please be respectful.

NorthSlopePipeNinja site profile image  

8/26/11 3:05 PM by NorthSlopePipeNinja

Reading comprehension, heard of it?I've read this thread a few times and it seems to me that MOST of the posters just want TapouT (ABG) to let this guy running a NONPROFIT raise money for cancer research. I really have no clue where you got the idea that people are calling for TapouT to give this guy money, it's not like you're seeing tapout cancer shirts at your local department store so he's not taking money from them there. Nobody's going to go online to order a TapouT walkout shirt and mistakenly order a tapout cancer shirt unless they're severely challenged.

MasterofMartialArts site profile image  

8/26/11 3:44 AM by MasterofMartialArts

I'm assuming they mean the clothes themselves are "an expression of combat"... Considering that clothes are technically a form of expression, just IMO.

PhucIt site profile image  

8/26/11 3:41 AM by PhucIt

He may not write a book, but if/when he open's an NHB/MMA museum all the shit talkers will be the 1st in line to look at his collection of bad ass NHB/MMA memorabilia that he collected from fighters over the years. You guys forget that the people that you IMMORTALIZE and only dream of meeting 1 time in you're life at a signing call SKYSKRAPE a friend!I've been on the UG for 12+ years now and I'm always amazed at the stupidity of thing's said on this site, why in the hell should Tapout(ABG) pay this guy who's trying to cash in on a name that was built by 3 people. Clearly UG members aren't business owners or been around such large companies.

GNPfan site profile image  

8/26/11 1:36 AM by GNPfan

SKYSKRAPE writing a book? Who the hell is going to buy that piece of shit? My guess is it will go right to the shelves at dollar stores across America.

MMAxNate site profile image  

8/26/11 1:04 AM by MMAxNate

Jon Thomas@TapOutCancer Jon ThomasUPDATE: We're working with @TapouT to work things out. I truly appreciate the support but please be respectful. Love u guys. Keep the faith!3 minutes ago via HootSuite