Authentic Brands Group sends cease and desist to nonprofit
August 25, 2011
Authentic Brand Group (ABG) recently sent a cease and desist notice to nonprofit Tap Out Cancer for use of the “TapouT” trademark. As a result, the small nonprofit must rename itself.
According to its web site, Tap out Cancer is a nonprofit which raises awareness through the Brazilian Ji Jitsu community. It raises money “[t]hrough merchandise sales, special events, sponsorships and direct donations.” On its web site it noted that it is in not affiliated with TapouT. But, this was not enough to avoid ABG’s request.
When a vendor expressed concern about the nonprofit’s use of the “Tapout” name, the nonprofit sent an email to ABG requesting it receive its “blessing” to use the “Tapout” name. According to the nonprofit, a month and a half passed before it received a cease and desist email.
Tap Out Cancer’s web site reprinted a portion of ABG’s correspondence:
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.
(via Tap Out Cancer’s web site)
The web site entry by the nonprofit reflects that they understand the reasons for ABG’s letter. While the timeframe took longer than expected, ABG is in its legal right to protect its trademarks. If not, more infringers would follow as the nonprofit points out. This has potential to be a public relations problem although the nonprofit used the “Tapout” name without permission. ABG’s correspondence is delicate and makes sure it is not impersonal in requesting that the nonprofit cease the use of “Tapout.”
Its a good cause, but the nonprofit should have asked ABG, or an attorney, prior to establishing the name of the nonprofit. Fortunately, it appears that there will be no further legal ramifications from this. While Tap Out Cancer indicated that it will lose money from merchandise it intended to sell, its better to take the loss now than to have to lose more money in legal fees to defend a lawsuit.