Thoughts?

[Barry]

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.

More (and source): http://www.tapoutcancer.org/rebranding-tap-out-cancer/?t=Rebranding+Tap+Out+Cancer+%E2%80%93+Thoughts+from+the+Founder


Thoughts?

[mikecalimbas]

I'm no lawyer so I can't speak about any potential legal ramifications but I don't think there is any PR battle to fight ...even though the statement itself is PR on this cause.

The charitable entity is fighting a noble cause - that's awesome, At the same token, Tapout has every right to protect their brand and I could see how the name (www.tapoutcancer.com) is close enough to cause confusion.

I don't see anywhere on their site where they actually state that they are a 501(c)(3) yet so they've got enough time to re-brand before they make things "official" so to speak. They don't have to start from scratch. All they have to do is switch a couple of logos around and make new business cards and t-shirts. I'm sure its painstaking for them to lose what they've built but just make the change and move on.

After all, fighting cancer is much more important than fighting Tapout. The root of the meaning is in the cause, not the name.     

[Mashi]

It's a sad story but whether fair or not, I can see why they received the response they did. Case in point  (as mentioned) with Susan G. Komen trying to trademark pink and 'race for the cure'. I thought it was pretty ridiculous but given that there are so many charities and organizations out there who want to make money, never mind the cause, it's not surprising that this couples idea was shot down. Lot of scams out there too. Sick as that is.

It makes me also think about Apple's lawsuit to Amazon for the "Appstore".

I wish I had knowledge about law to give productive comments... but, along the lines of charities, particularly for cancer, I thought this article was very informative: http://www.time.com/time/specials/packages/article/0,28804,2075133_2075127_2075103,00.html

It brings to light how certain organizations spend the donation money (i.e. percent they give to research vs. advertising).

I applaud what the couple is trying to do and I hope they are able to keep their dream alive, but, one thing is... there are so many charities and organizations out there. There is nothing wrong with participating/donating/working to an already established organization that does give significant contributions to research.

Funding for research is EXPENSIVE. I can say I know a little bit of this because I'm in biomedical research. You have the costs of hiring personnel, buying lab equipment, lab supplies, and reagents. One instrument alone can cost over 100k, easy. Reagents for that instrument is expensive. A reagent kit can cost a couple hundred dollars; then you have to repeat that experiment. Multiply that to 10 people in ONE lab doing that. That is why we researchers are always begging for more money. We need it.

What I mean is... fundraising, no matter the amount, is a wonderful feat for a great cause and every little bit helps. But, I sometimes think having 10 people donate to 10 separate entities is less productive than having them all donate to a big, well established organization. The $100 donated to a small organization would be split to be used for cost of goods, maintenance of site, etc. Whereas $100 to a larger company that gets a lot more support.. your money might go predominantly to, say, a fellowship/scholarship.

[rasta420]

So does that mean I can't say "my opponent made me tap out"? Maybe you should change it to Choke Out Cancer or Make Cancer Tap.

[Barry]

As long as you don't say TapouT and emply with your vocal tone that the T's are capitalized, I think you'll be ok...but I"m no lawyer!

[Bad Man]

TapouT is absolutely, 100%.... incorrect. They do not stand a chance. They know that or their very FIRST communication would have been a very official "Cease and Desist" letter from their attorneys.

To begin with, TapouT clothing can not own the phrase, "tap out". They did not create the phrase, which is a verb used to identify the act of submitting to an opponent within combat and grappling sports.

They own only the name TapouT, used here with capitals on each end to indicate their visual branding. They can not lay claim against a charity named Tap Out Cancer as it clearly does not compete or infringe upon their intellectual property.

Supporting evidence: in 2009 the Transformers franchise introduces a new Autobot, A Porsche 924 that was the best Autobot at hand to hand fighting. The autobot's name? Tap Out.

Lawsuit? Not even a whisper of a hint of one.

The charity is golden unless they fold under pressure.

The cowards never start, and the weak die along the way.