In New York City Triathlon, LLC v. NYC Triathlon Club, Inc., 2010 WL 808885 (S.D.N.Y. 2010), the court granted plaintiff’s request for an injunction against defendant barring defendant from using versions of “NYC Triathlon” in its name. New York City Triathlon, LLC (“NYC Triathlon”) sent a cease and desist letter to NYC Triathlon Club, Inc. (the “Club”) after the Club changed its name from SBR Multisports, Inc. to NYC Triathlon Club. The Club did not respond to the letter, and NYC Triathlon then filed its request for injunctive relief seeking relief to protect its trademark and goodwill pursuant to the U.S. Lanham Act and to the common and statutory laws of New York.
The New York City Triathlon is a grueling and popular Olympic-distance triathlon offered every summer in New York, New York. Last year, 20,000 applicants vied for 5,600 race spots, and an estimated 250,000 spectators attend the event. The triathlon is sanctioned by USA Triathlon, the independent organization that governs triathlon racing in the United States. Numerous news and media outlets cover the race and it has received local coverage in nearly every U.S. State. Media outlets in Australia, India, and Great Britain also cover the triathlon. The Club is a retail outlet that sells triathlon equipment, and it was among the triathlon’s sponsors from 2005-2008.
The court found that NYC Triathlon’s marks had acquired secondary meaning because they signified NYC Triathlon as the exclusive source of the services at issue to an appreciable number of consumers. “NYC Triathlon Club” was also confusingly similar to “NYC Triathlon,” “New York City Triathlon,” and “NYC Tri.” The court analyzed the proximity of the goods and services provided by the two entities and determined that NYC Triathlon and the Club operated in the same channels of trade and that consumers may mistakenly assume a common source of the goods and services. NYC Triathlon also was able to demonstrate actual consumer confusion by submitting emails it received indicating individuals assumed the two organizations were the same.
The court found that the Club’s bad faith in using the NYC Triathlon’s marks was evident from its decision to change its name rather than pay NYC Triathlon a sponsorship fee, from its failure to respond to NYC Triathlon’s cease and desist letter, and from its history of attempting to trade on the goodwill of other sporting events, namely, the Ironman Triathlon, by creating what it called the “Iron Race.” The court also found that the Club‘s quality of products and services was inferior to those provided by NYC Triathlon. Though the consumers in the relevant market may be sophisticated, 56% of the race’s registrants identified themselves as first-time triathletes and may be confused by the similar names. The court therefore granted NYC Triathlon’s motion for an order enjoining the Club’s ongoing trademark and trade name infringement and other claims related to dilution, cybersquatting, unfair competition, and deceptive trade practices.
If you suspect your mark is being misused or if you are concerned your mark may infringe another mark, you should contact counsel experienced with trademark and brand management.