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The Zest

Run clubs, races and fitness events: trademarking an event name

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Yes. An event name is a service mark, and run clubs, races and fitness events are registered in Class 41, the class for "education; providing of training; entertainment; sporting and cultural activities." The name counts as used once you've advertised it and actually held the event, not when you announce it. And the shirts and other merch sold under the name are goods in their own classes, so a Class 41 registration doesn't cover them.

Is a run club a "service"?

It usually is, but it's worth checking, because the USPTO has a test. The Trademark Manual of Examining Procedure (TMEP), the rulebook examiners follow, says a service must be "a real activity," must be "performed to the order of, or for the benefit of, someone other than the applicant," and must be "qualitatively different" from what's necessarily done to sell the applicant's goods or perform another service.

A weekly group run or an annual 5K organized for the people who show up fits that test. Nothing in those three criteria is about price, so the analysis doesn't change just because your Saturday run is free.

Here is the part that surprises people. If you're a product brand and the event is mainly a way to sell your product, the answer can change. The TMEP says "conducting a contest to promote the sale of one's own goods is usually not considered a service." But it also gives examples where a brand's event did count: a "tobacco company's participating in auto race held to constitute an entertainment service," and a "clothing manufacturer's conducting women's golf tournaments held to be a service." The question is whether the event goes beyond what a company in your field would normally do to sell its goods. A shoe brand's community run club that meets every week can look a lot more like the golf tournament than a giveaway.

Which Class 41 wording fits

Class 41 has entries that fit fitness events directly:

  • organization of sports competitions
  • organization of competitions [education or entertainment]
  • conducting fitness classes
  • personal trainer services [fitness training]

The Class 41 note also covers "ticket reservation and booking services for entertainment, educational and sporting events." A race is usually organization of sports competitions. A run club with coached workouts may be closer to conducting fitness classes. Many clubs do both, and the description should list what you do.

When an event name counts as used

The statute says a mark is used for services "when it is used or displayed in the sale or advertising of services and the services are rendered in commerce." Both parts matter.

The Federal Circuit applied this in a 2015 case, Couture v. Playdom. The applicant had advertised services under the mark but hadn't provided them yet. The court said "a mark for services is used in commerce only when both" conditions are met, and quoted an earlier case: "advertising or publicizing a service that the applicant intends to perform in the future will not support registration." The registration was cancelled.

The TMEP says the same thing for events in planning: "the use of a mark in the announcement of a future service" is not service mark use.

So for a first-year race, posting the registration page isn't enough to file on actual use. You need to hold the race. Until then, the option is an intent-to-use application, which you file based on a bona fide intention to use the name and then back up with proof once the race happens. That later filing, the statement of use, is $150 per class, and each extension request is $125 per class. I explained the process in the article on intent-to-use applications.

What about a once-a-year event?

An annual race isn't in use 364 days a year, and that's normal. The statute's abandonment rule is about use being "discontinued with intent not to resume such use," and it says "nonuse for 3 consecutive years shall be prima facie evidence of abandonment." Skipping a year can happen. Letting the event lapse for three years puts the name at risk.

For the specimen, the TMEP accepts advertising that shows the mark used with the services, with examples like "newspaper and magazine advertisements, brochures, billboards, handbills." The ad has to show "a direct association between the mark and the services." A race flyer that names the event and the race is the kind of thing that works. I covered what makes a good specimen in the article on specimens.

The merch is a separate filing

Race shirts, club tees and hats are where event founders tend to assume the race registration already covers them. It doesn't. Clothing is Class 25, which covers "clothing, footwear, headwear," and its list includes "sports jerseys" and "sports singlets." A Class 41 registration for the race covers the race.

Two more things to know about merch:

  • You can't add Class 25 to the Class 41 application after filing. The rule lets you amend a description "to clarify or limit, but not to broaden" it.
  • A big event name across the front of a tee can be refused as ornamental. The USPTO says "a trademark cannot appear as merely an ornamental or decorative feature on the goods." It treats a tag on the garment, or discrete wording on the pocket or breast area, as the kind of placement that points to the source. I wrote about that in the article on ornamental refusals.

What this means for your event

Decide what the name covers: the race, the weekly club, the classes, the merch. File Class 41 for the event side, and add Class 25 if you're selling shirts or hats under the name. If the first event hasn't happened yet, file on intent to use and keep the flyers and registration pages from race day. And keep the event going. The base fee is $350 per class, so it's worth matching the classes to what you sell.

If you want to talk through how your event and merch should be filed, you can see how the search and filing packages work on the services page, and the FAQs page answers most of what comes up before a first call.

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Sources

This article is general information, not legal advice. Reading it does not create an attorney-client relationship.

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