A federal judge from the Southern District of New York has sided with the owners of the
New York City Triathlon, LLC in a trademark dispute with the NYC Triathlon Club, citing the plaintiff’s “exclusive, long-term and well-known use of the NYC TRIATHLON Marks.”
In addition, the Club’s recent adoption of the name meant that the defendant had established “little or no goodwill.” In sum, the defendant’s arguments “would not outweigh the irreparable harm and damage to the plaintiff should the defendant continue its infringing and confusing use of the plaintiff’s name and marks.”
The NYC Triathlon is an Olympic distance triathlon, consisting of a 1500-meter swim in the Hudson River, a 40-kilometer bike ride up the West Side Highway and a 10-kilometer run into Central Park. The event, which has been held every year since 2001, attracted more than 20,000 would-be entrants this year, selling out in less than seven minutes after registration opened online.
“The race has developed a loyal and enthusiastic following,” wrote the court, noting that “thousands of participants have e-mailed John Korff, the plaintiff’s principal owner and organizer of the race, to praise the race and to praise the plaintiff’s organization and attention to detail.” To stage the race, the plaintiff had to gain approvals from dozens of governmental bodies, according to the court. Other mitigating factors are the extensive media coverage and a strong roster of “well-known and famous” sponsors.
The defendant, SBR Multisports Inc. is a retail outlet selling triathlon equipment, owned and operated by Christophe Vandaele. By press release, the defendant announced that effective Jan. 1, 2010, it was changing its name from “SBR Triathlon Club” to “NYC Triathlon Club.” The plaintiff sent the defendant a cease and desist letter dated Jan. 8, 2010, seeking a response by Jan. 15, 2010. When none came, the plaintiff sued, seeking injunctive relief to protect its name, mark and goodwill pursuant to Section 43(a) of the Lanham Act and the common and statutory laws of New York.
In its analysis, the court restated the plaintiff’s 7-count complaint:
(1) trademark infringement, false designation of origin and unfair competition pursuant
to section 43(a) of the Lanham Act (15 U.S.C. § 1125(a));
(2) dilution pursuant to section 43(c) of the Lanham Act (15 U.S.C. § 1125(c));
(3) cybersquatting pursuant to section 43(d) of the Lanham Act (15 U.S.C. § 1125(d));
(4) common law trademark infringement under New York State law;
(5) dilution pursuant to New York General Business Law § 360-l;
(6) violation of New York General Business Law § 349, New York’s deceptive acts and practices statute; and
(7) unfair competition pursuant to the common law of New York.
“Based upon the application of settled law to the undisputed facts, the plaintiff is likely to succeed on the merits of each of its claims,” wrote the court.
Some of the reasons highlighted that reinforce the strength of the plaintiff’s marks include the “vast media coverage that the event receives” and the “apparent relentless attention to the participants and customer service”
Korff, for example, “personally e-mails each registrant to welcome them to the race. The e-mails Korff receives, though, truly signify the Marks’ goodwill and the secondary meaning they have earned. Thousands of people have e-mailed the plaintiff praising the race and the plaintiff as the source and organizer of the race.”
“The NYC TRIATHLON Marks are valid trademarks deserving of protection, satisfying the first element of a claim under Section 43(a) of the Lanham Act.”
Another important factor weighing in favor of the plaintiff was the possibility for confusion.
“The central and important part of each of the marks at issue is identical in appearance, sound, and meaning – the words ‘New York City Triathlon,’” wrote the court. “Here, the plaintiff and the defendant clearly operate in the same channels of trade. The individuals they service are exactly the same – those seeking to participate and train for an endurance sporting event. The sponsors are also the same – sponsors of the race, sports drinks, bottled water, and equipment manufacturers, for example, are the very same sponsors that triathlon clubs seek for sponsorships. Indeed, the defendant has indicated on its website that it is actively engaged in seeking such sponsorships. Not only are the parties’ services marketed to the same exact individuals and organizations, there is also no dispute that the services of a triathlon race and a club which helps competitors prepare for triathlon races are ‘used together.’ Both parties also primarily receive ‘customers’ online. Further, given the popularity of the NYC Triathlon and the ubiquity of triathlon clubs, there is a distinct likelihood that triathletes and sponsors will assume that the plaintiff has commissioned a triathlon club in its name. This is especially likely for a race occurring in the New York City area, where the New York City Marathon, another distinguished racing event held in the City, has been owned and operated by a running club, the New York Road Runners, for approximately 40 years. Moreover, placing the plaintiff and the defendant in even closer proximity, the plaintiff has begun associating the NYC TRIATHLON Marks with a training club through its relationship with Reebok.”
Thus, the court granted the plaintiff’s motion for an order preliminarily enjoining the defendant’s ongoing trademark and trade name infringement, dilution, cybersquatting, unfair competition, and deceptive trade practices.
The New York City Triathlon, LLC v. NYC Triathlon Club, Inc.; S.D.N.Y.; 2010 U.S. Dist. LEXIS 21757; 10 Civ. 1464(CM); 3/9/10
Attorneys or Record: (for plaintiff) Aaron Grant R. Rubin, Lisa T. Simpson, Peter A. Bicks, LEAD ATTORNEYS, Orrick, Herrington & Sutcliffe LLP (NYC), New York, NY.
