What’s In a Name? A Lawyer Weighs In

What’s In a Name? A Lawyer Weighs In

Need a legal leg to stand on when it comes to others copying your gym? One attorney says that your imitator may be liable of “causing confusion.”

“There’s no reason in the world why a gym cannot have a trademark in its name [or] its logo. And there’s no reason that a gym can have a trademark in its color combination the way a university may have,” says James Astrachan, former chair of the Intellectual Property Committee of the Maryland State Bar Association.

If you trademark your team’s name, logo and/or colors, your gym is referred to as the “senior user,” Astrachan notes. He adds that a gym owner is then protected from “a junior user—a johnny-come-lately using those logos and colors.”

Another gym using your brand marks can be embarking on “infringing conduct,” because this is likely to cause confusion between them and you as the senior user, he says, or imply an affiliation or endorsement that is not there.

Trademarks are protected federally under the Lanham Act of 1946, and even slight variations of a trademarked logo are not acceptable. “If there’s likely to be confusion, there’s infringement,” says Astrachan, who also teaches Trademark and Unfair Competition at the University of Maryland Law School. The Lanham Act forbids, in part, that which “is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection or association of such person with another person.”

His recommendation is that new gyms go to a lawyer and order a trademark search, as there are databases full of registrations, articles and other information that can be mined to determine that your intended name, logo and/or colors have not already been trademarked.

“A lawyer would give somebody a clearance that the mark that you have determined to use is not likely to cause confusion with another existing mark in your marketplace,” Astrachan says.

Make Your Mark: Protecting Your Gym Brand

Make Your Mark: Protecting Your Gym Brand

You’ve worked hard to establish your own gym, creating a unique identity with colors, logo and uniforms. A few years later, having built a solid reputation, you’re at an event when in swaggers a brand-new team—wearing colors very similar to yours, a logo that looks awfully close to yours and (wait for it) practically the same name as yours, just with a different spelling.

Is this a scenario for yet another Bring It On movie? Unfortunately, no. It’s an all-too-common occurrence for many all-star cheer programs. In fact, that’s exactly what happened to Leslie Pledger-Griffin and her Renegade Athletics teams a few years ago. “We’re at a competition, they walk in [with] our same colors, same name, very similar uniform,” she says. “My kids and the parents were like, ‘What’s going on here?’”

Adam Rufkahr’s St. Louis, MO-based Platinum Athletics has seen its own imitators as well. “We actually have had two gyms that have started up using a version of our gym name or trying to copy older versions of our uniforms,” he says. “Thankfully they weren’t anywhere around us, so they didn’t really cause us too many problems, but it is frustrating.”

And Courtney Smith-Pope, owner of Cheer Extreme, was even surprised to find herself in the competition event business—or so it seemed when a company popped up called “Cheer XTREME Events” using actual photographs of her athletes in uniform, complete with her gym logo.

All three gym owners had put a lot of thought and effort into creating a brand for their own gym, so to see imitators was not something to be taken lightly.

“We have taken steps to protect ourselves locally and to keep things like our logo, uniform, routines, etc., safe from others trying to duplicate them,” says Rufkahr. “For instance, we ordered fully custom uniforms from GK to make sure that not only are we getting the best product in the business, but also they will not use or duplicate our design for any other program.”

Renegade Athletics and Cheer Extreme both have trademarked logos, according to their owners, but even that is not foolproof. “We went through the whole trademarking process several years ago, and unfortunately you can only trademark certain logos and certain words,” says Pledger-Griffin, giving the example of another team that is Renegade All-Stars—which she cannot prevent: “We can only protect Renegade Athletics.”

Logo is another entity that can be hard to make bulletproof. Adds Pledger-Griffin, “I can protect my certain logo that is on my website and my uniforms and things like that, but if [others] put any kind of discrepancy in that logo that would not make it exact, then you can’t really [prevent] that.”

Smith-Pope says that she uses her gym’s logo on all uniforms, rather than the words “Cheer Extreme,” as protection for her brand. “It’s harder to own the words ‘Cheer Extreme;’ it’s much simpler to trademark an actual brand symbol,” she says. “Any picture that involves any of our athletes automatically has our logo in it and subjects it to our rights. If things are going to be photographed, include your logo and (have) your logo trademarked.”

Jim Lord, executive director of the American Association of Cheerleading Coaches and Administrators, says that the first step to protecting your brand is to look at your gym as a business, not just something you love. Trademarking your team’s name or logo is simply protection, he says, because if you find your gym in conflict with another, having the paperwork registering your trademark is proof in your pocket.

Details matter as well: “The more specific you are about what you’re protecting, the better you can do,” Lord says. “You’re going to have a hard time protecting the words ‘Elite Cheerleading Center’ [because] it’s already all over the place. But what [you] could do is have ‘Elite Training Center’ and have a special way you put it together, our logo, whatever our mascot is, so you have a specific mark, that then really becomes more of what you can trademark.”

Lord also recommends gym owners go to their chamber of commerce for guidance on local laws. Having an attorney on retainer is helpful, he says, because they can be familiar with your business and ready to go to work for you.

“In some cases, a simple cease-and-desist letter from an attorney is going to be enough to make somebody change,” says Lord. “[It can] make the [imitator] re-think, do you really want to go to court over this or do you just want to come up with your own logo?”

Can there be a happy ending to these situations? Smith-Pope, for one, resolved the problem easily after a conversation with the event producer. “He was great about it, he took all the words down, he took down the pictures,” she says. “He understood and had an appreciation for the work that we’ve done and what we’ve built.”

Rufkahr says he felt it best to take the high road and that gyms with the same name can possibly co-exist. “I think it comes down to focusing on your gym and your product and making it the best it can be,” he says.  “One thing my mom always told me is, ‘Imitation is the most sincere form of flattery,’ so when you look at it like that, really, it’s a compliment.”

-Jennifer Deinlein

Intrigued? Visit our blog for more tips from lawyer James Astrachan on the legal aspects of protecting your brand!