WTC and the term Ironman
Written by: Douglas Robinson
Date: Sun Mar 20 2011
Dan Empfield wrote an extensive article detailing the history of the Ironman trademark in an article from August 2001.
People frequently argue that the term "Ironman" is equal to the term "marathon". For the most part this is not true. A marathon denotes a race of 26.2 miles. A Full Ironman denotes a race of 140.6 miles. However that is where the similarity ends. Marathon is a generic term while Ironman triathlon is a registered trademark. It is more appropriate to equate the term "ironman" to the term "marathon" as both terms are generic, i.e., are generally in the public domain with regard to racing and races.
The World Triathlon Corporation (WTC) is the focus of a lot of animosity for their restrictions on the use of the term "Ironman" with regard to triathlons. As Dan stated this sentiment is unfair. As Chris McCormack correctly said in his recent ST interview, "Because the WTC own the Ironman brand, they feel they have to protect it."
As far as their control of the Ironman trademark (hereafter Mark) is concerned, the WTC is within its rights, and the public actually benefits from this. A quick review of the purpose of trademarks and servicemarks should shed some light on things. Marks protect names, titles, symbols, slogans and combinations thereof that identify the source of a product or service. By allowing the registration of Marks, the Government helps consumers develop confidence in the sources and quality of goods and services.
When you buy a Nike running shoe you have confidence in the quality of the product you are buying. If Trademark protection did not exist then there would be nothing to prevent someone from making a running shoe bearing the word "Nike" along with the swoosh. In fact the incentive would be to produce the cheapest product since anyone could use the Mark on their shoe. Thus, even if Nike developed the "Nike" Mark by making a quality product and developing good will, other companies could make a inferior quality product, put the same "Nike" Mark on their shoe, and charge less. Not only would you have no confidence in the quality of the shoe you were buying, but in order to compete with the copiers, Nike would be forced to make a lower quality product. Ultimately the public would be harmed.
Thus it is clear that Trademark law exists to provide the public with confidence in the source and quality of goods and services. Trademarks protect consumers from being misled about the origin of goods and services, and they protect competition by guarding the goodwill developed by the owner of a Mark. Because of the existence of Trademark law the public is provided with indicators that we can use to determine the quality of goods before we buy them. These Marks thus represent the goodwill an entity has developed relating to a good or service.
An owner of a trademark can sue subsequent parties for trademark infringement. The standard is "likelihood of confusion." In particular, the use of a Mark in connection with the sale of goods or services constitutes infringement if it is likely to cause consumer confusion as to the source of those goods or services.
Regardless of whether you like the WTC or not, the majority of people know the quality of the event that they are participating in or watching if it is an "Ironman" event. If someone else used the Ironman Mark for a race most people would assume it was sponsored or run by the WTC. Thus the WTC has done a good job of making that association. I am sure that is a major effort on their part when they acquire another race organizer.
The strength and eligibility of a Mark to obtain protection depends on a number of factors. Marks fall into one of the following four categories:
1. arbitrary or fanciful;
3. descriptive; and
The strongest terms are arbitrary or fanciful. Such terms are usually made up words and thus have no preconceived connotations as to their meaning other than their meaning as a trademark. Examples include the Marks Lego and Kodak.
Suggestive terms suggest a characteristic of a good or service without actually stating that characteristic. Examples include Jaguar for fast cars and Greyhound for buses.
Descriptive Marks identify some aspect of the goods or services and can only be protected if they have developed what is known as secondary meaning, e.g., an association by the public of the Mark with the owner's product or service. Examples include Bank of America and New York Life Insurance.
Generic Marks cannot receive trademark protection even if they have a secondary meaning. An important point is that owner's of famous Marks must be careful, because their Marks may lose protection if the public ubiquitously uses their Mark as a common noun or adjective. Examples include: Aspirin, Escalator, Kerosene, Netbook, Thermos, Yo-Yo and Zipper.
It is therefore important that a trademark owner carefully monitor it's Mark and make sure not only that others are not using or diluting their Mark, but take steps to prevent its Mark from becoming generic.
Unauthorized use of a trademark can dilute the Mark making it less distinctive. Thus it is imperative that a trademark owner prevent unauthorized use of their Marks which would dilute the distinctiveness of that Mark. Failure to do this can cause the loss of that trademark.
The Ironman Mark is most likely a suggestive Mark. Prior to the first race in Hawaii in 1977, there was no association between triathlon and the Ironman Mark. The Ironman Triathlon Mark was registered in 1981, and is presently owned by the WTC, along with many other variations and other Marks.
The WTC has been very diligent in its protection of the Ironman Mark. They provide the race organizers with a set of rules for the use of their protected Marks. Another way to protect the Mark is to make sure that the media does not use the term Ironman generically. As Dan pointed out in his earlier article, the Ironman Mark is integrally important to the WTC. Thus their protectiveness of the Ironman Mark is critical.
The term triathlon is available for use by anyone to describe a race involving swimming, biking and running. The fact that the term Ironman is not available without the authorization of the WTC is not an undue burden on the rest of use. Whether you like the WTC or not, by protecting the Ironman Mark, the public is assured of the quality of the race operated or sponsored by the WTC.
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If a company's athlete wins Ironman, can it say that without paying Ironman? Can the athlete say it? As with winning an Olympic medal, the answer is yes and no. 10.27.14
Jonathan Toker, our science editor, who wrote about inventing (our editors tend to have a history along those lines). As an addendum to Toker's piece, here's a bit of advice on protecting inventions. 1.31.11
One would be hard-pressed to come up with an industry, activity or economy in which one single trademark is more powerful or over-arching than in triathlon, and the trade name is Ironman. 8.06.01
Reviewed by: Mikel, Mar 30 2011 6:46PM
Another attorney's view
Reviewed by: Tom Galvani, Mar 29 2011 6:00PM
WTC, give me a break!
Reviewed by: Kate, Mar 24 2011 1:50PM
Protecting the Mark
Reviewed by: Scott, Mar 24 2011 1:43PM
Good article. I do not agree with everything WTC does, but I completely understand their actions with regard to protecting their Mark.
result rather than purpose
Reviewed by: John Blyth, Mar 24 2011 12:49PM