03.05.12 9:45 AM ET
Livestrong’s Trademark Bullying Record Revealed
On Jan. 31, Lance Armstrong looked at his widely followed Twitter account and saw something odd: he was getting razzed by an anonymous stranger who used the handle @Ashtheprotestor. “You are a coward for suing someone who’s brand sounds like yours,” the tweet said. “If your shits awesome people will still buy it. [Y]ou suck.”
Armstrong tweeted back, sounding baffled. “[E]xcuse me, did I miss something here. I have no clue what you’re talking about.”
“[Y]ou are suing Sara Rufener for her brand Live the Beauty of Being Strong,” @Ashtheprotestor replied. “[I]s that necessary?”
“[F]irst I’ve heard of it,” Armstrong wrote.
“[O]r maybe it’s just your lawyers, either way please ask them to stop with this. Then I will retract my you suck statement :)”.
Armstrong didn’t respond again, and chances are he didn’t think about it much after that. Three days later, he had something more pleasant to focus on: without any explanation, the U.S. government abruptly dropped its long-running investigation into whether he had used performance-enhancing drugs while riding for the U.S. Postal Service team in the Tour de France. As they say in Paris, pop the corks!
Later, I was able to identify @Ashtheprotestor as Ashley Wardle, a 24-year-old graduate student in sociology at San Diego State University. Wardle has been in the news there recently as a protester, active on issues ranging from campus labor conditions to proposed tuition hikes. She narrowly escaped a two-year suspension after showing up at a Board of Trustees meeting in November that ended with her and a few others getting pepper-sprayed. She heard about Rufener through a mutual friend who’d mentioned her on Facebook, and she decided to give Armstrong a hard poke. Why?
“For my ... thesis I am writing a theoretical piece on how the rich own language,” she wrote in an email. “... A patent we use on words everyday is crazy in any context other than capitalism.” On a less theoretical plane, she wanted Armstrong to know that “he should be ashamed of what his brand is doing.”
Wardle was mistaken about one fact, but right regarding the larger situation. Neither Armstrong nor his famous Austin, Texas–based charitable outfit, the Lance Armstrong Foundation (a.k.a. Livestrong), has sued Rufener, a 32-year-old personal trainer who lives in Bend, Ore. Even so, Armstrong’s vigilant lawyers—who rack up hundreds of thousands in legal fees every year protecting the trademarked coinage “Livestrong”—made it clear that she’d better back off from what they saw as infringement.
On a website advertising her services, Rufener uses three main phrases: Muscles by Sara, her LLC’s name; Real Women Have Muscles, her “doing business as” name; and Live the Beauty of Being Strong, an inspirational phrase.
In 2010 she applied for trademark protection on the last two, but Live the Beauty of Being Strong was the sticking point, because it contains the fateful words “live” and “strong.” Livestrong’s lawyers monitor the records of the U.S. Patent and Trademark Office, often pouncing on proposed trademarks like that. They appear to think that Livestrong has exclusive rights to those two terms when they’re used in close proximity—and, sometimes, when they’re used not so close or are used alone.
“We ... believe your client’s use of LIVE THE BEAUTY OF BEING STRONG is likely to cause confusion concerning the origin and/or association of the respective parties’ goods and services,” wrote Paul A. McLean, a California-based lawyer with the firm DLA Piper. McLean presented Rufener and her attorney—Montana-based Kelly R. O’Brien—with a list of demands. First, they had to stop using the phrase immediately, agreeing to abandon their trademark application by Jan. 9 of this year. Then came this doozy, which gives you some idea of Livestrong’s proprietary feelings toward two very common words.
“[Do] not use or apply to register an identical or similar mark using LIVE and LIFE, or formatives thereof, with STRONG or any formative or variant thereof in any form whatsoever, or any other mark or name comprised of the term STRONG preceded by another term or number, in connection with charitable fundraising, jewelry, wristbands, or in the field of cancer or cancer related goods, services or activities.”
At first, Rufener didn’t yield. O’Brien doesn’t specialize in trademark litigation, so Rufener contacted an attorney in Washington, D.C., who thought the dispute might be winnable. But, of course, fighting it out would be costly. Rufener says she was told to count on spending tens of thousands just to get in the game of defending her proposed trademark, which requires plenty of lawyer time even if you don’t wind up in court.
Rufener couldn’t afford that, but giving up would be expensive, too. Wrongly assuming she would get the Live the Beauty of Being Strong trademark without a hitch, she had invested roughly $10,000 in merchandise featuring the slogan, including tank tops, jogging shorts, a zippered hoodie, and water bottles. If she abandoned the trademark, she would have to swallow that expense—not an appealing prospect for any small businessperson.
So Rufener and O’Brien wrote McLean to ask if they might forge a compromise. “Is your opposition to any use of Live and Strong together?” O’Brien asked. “Or is it simply to ... having Strong emphasized in large print under the word Live on her Website? ... I would like to determine her options for proceeding and hope that we can resolve this issue without prolonged legal action.”
By then, Rufener had done one (and only one) interview, with KTVZ, an NBC affiliate in Bend that aired a short report on Rufener’s plight. McLean knew about this, and he told O’Brien that any discussions about a compromise couldn’t proceed until Rufener agreed to “cease further media contact.”
Rufener is an outspoken, big-personality woman who didn’t like agreeing to be muzzled. So she gave up on the trademark while retaining her right to speak her mind. (She’s considering a merchandise line featuring the phrase “Live the Beauty of Being Stung.”) Before Rufener threw in the towel, she had hoped to speak with Armstrong himself over the phone. But Livestrong declined my suggestion that he speak to Rufener and declined my request for an interview with him, saying that it would be “inappropriate” to ask “the chairman of a $450 million non-profit organization ... serving cancer survivors to weigh in on an individual trademark infringement.”
I asked Rufener what she would say if given the chance. “I would ask him why his foundation feels so inclined to oppose anyone that uses the word ‘strong,’” she said in an email. “In my book, it has now become a bad word. Isn’t there enough room in this world for others to use it? No wonder Sheryl broke up with him. He seems pretty selfish to me! :)”
Just for the record: I don’t think trademark law is inherently silly or cruelly capitalistic, so I understand why a major organization like Livestrong has to assert itself now and then. It takes a great deal of time and money to build a successful for-profit or nonprofit brand, and a primary aim of trademark law is to protect that value from piggybackers who want to tap it for next to nothing, by imitating a name or slogan of established worth.
This happens to Livestrong a lot, and it is obliged by law to push back when the infringements strike them as blatant. As it was put in a statement to me: “Licensing [the Livestrong] brand is a major source of fuel for our mission: serving people and families affected by cancer. Naturally, we protect our brand, but ... [our] modest investment in trademark protection is well within the norm for a brand of Livestrong’s magnitude.”
On the patent office’s website, you can see several examples of companies and nonprofits whose proposed marks, intentionally or not, appear to play on Livestrong’s words and rhythms, including EatStrong, Brainstrong, Workstrong, Drinkstrong, Rowstrong, Sanistrong, Diestrong, Coachstrong, Christ Strong, and Godstrong.
But sometimes the alleged infringements look questionable—especially in cases where “strong” appears by itself in a way that doesn’t bring “Livestrong” to mind at all. Trademark law is not an exact science, but one standard lawyers use is to ask whether reasonable people will be “confused” into thinking the product or slogan used by the piggybacker was licensed by the infringed-upon group. For example, if I were to start selling a line of bright-yellow condoms stamped with the phrase “Lovestrong,” many might think Livestrong had gone into the prophylactic business. I could understand why they might come after me.
But what if I called the brand Long & Strong and they were manufactured in yellow, blue, red, and peach? I’m pretty sure Livestrong would still hunt me down. The website Trademarkia recently ranked Livestrong second among “biggest bullies” on the corporate trademark front, behind Kellogg’s but ahead of such famously protective companies as Apple, Zynga, and Facebook. One outfit that Livestrong successfully opposed was a health-and-wellness publisher called Long and Strong.
In 2008 Livestrong also blocked a trademark for a company in Montana, Hip Headz, which made colorful Spandex covers for outdoor-sports safety helmets. Livestrong objected to the company’s slogan, “Be Hip. Be Active. Be Headstrong.” Over the years, Livestrong has lodged oppositions to Retire Stronger; Kansas Strong (the proposed slogan of an oil and gas association); The Right Calcium to Help You Stand Strong; and a Spanish phrase used by the durable-clothing company Carhartt, “Trabaja Duro,” which can translate as “work hard” or “work strong.” Carhartt’s trademark application cited the latter.
Currently, Livestrong is engaged in some sort of legal conflict with a Pennsylvania-based cancer charity called the Headstrong Foundation, created in the memory of Nicholas “Head” Colleluori, a collegiate lacrosse player who died in 2006 of B-cell non-Hodgkin’s lymphoma. Facing opposition from Livestrong, Headstrong abandoned a trademark application in late 2010 for the phrase “Headstrong Foundation Getting Ahead of Cancer,” but the words are still in use on the charity’s website. Neither side would talk about the situation, which a Livestrong spokesperson described to me as “an ongoing legal matter which I unfortunately can’t discuss.”
Why do Livestrong’s officials think they have a right to oppose “headstrong,” a word that predates Livestrong by roughly 500 years? Well, because they say they do, and they have good lawyers and a large budget to bring oomph to their cause: in 2010 alone Livestrong reported spending $468,355 on “legal fees” related to domestic and international trademark infringements. Trademark disputes are not a level playing field. Big dogs can stomp little dogs by sheer dint of their financial might, and the companies being opposed are often small enough that the prospect of an expensive legal battle is terrifying. So they surrender or give up once they realize how costly the fight will be.
There’s no way to know whether Rufener could have prevailed against Livestrong, and the attorney she consulted declined to speculate. But Livestrong doesn’t always win: Kansas Strong was eventually trademarked, for example, as were KIDStrong (a health beverage for preadolescents) and KIDSSTRONG, a charitable group. Based on those examples and that of an Oklahoma outfit called Barkstrong—which tussled with Livestrong in a legal dispute that persisted for years—I think Rufener might have come out all right.
In summer 2005 an Oklahoma for-profit company called Animal Charity Collar Group, Inc., started making dog and cat collars that had the same look and feel as Livestrong’s famous yellow bracelets, stamped with the words BARKSTRONG and PURRSTRONG. Various conflicts ensued, before both the Trademark Trial and Appeal Board (a judicial body within the patent office that rules on many kinds of trademark cases) and in U.S. federal court.
Livestrong sued Barkstrong founder Chris Ohman for trademark infringement in September 2007, arguing that yellow “silicon-like gel material necklaces” on pets would confuse people into thinking the project was Livestrong-approved, which it wasn’t. Ohman had approached Livestrong in the summer of 2005 to pitch a formal licensing deal, but Livestrong said no.
Ohman sued Livestrong in April 2008, claiming that Livestrong had infringed on a design patent he’d gotten—for BARKSTRONG collars—by producing and selling LIVESTRONG pet collars of its own. Ohman had tried to patent LIVESTRONG pet collars, too, but was turned down. Chris Ryan, a patent litigator who blogged about the lawsuit on CNET, thought Ohman’s case was weak.
“The lawsuit appears extremely questionable,” he wrote, “in light of the fact that the Patent Office expressly denied Mr. Ohman design patent protection for collars with the word ‘LIVESTRONG’ printed on them because of prior art found on none other than LAF’s own website.”
The exciting conclusion to this drama: both cases were settled out of court in 2008, with terms that are not to be disclosed. As for the trademark itself—a matter that was handled separately by the Trademark Trial and Appeal Board—Ohman retained the right to keep using a form of BARKSTRONG, but with two key modifications. The collars couldn’t be yellow, and the slogan—in a truly Solomonic solution—had to be spelled BARKSTRONG.
Arguably, Rufener lost a battle she might have won, but don’t pity her too much. She’s a tough person who got into what she’s doing in a one-step-at-a-time way that screams resilience. Rufener grew up having an aversion to exercise—based in part, she now thinks, on a steady diet of societal messages saying that women with muscles and bulk and strength were more than a little weird.
“[The] overwhelming pressure to be thinner, prettier, and sexier begins subtly,” she says on her website. “... In high school, there are only two types of girls—the ‘skinny girls,’ and ‘everyone else,’ and no matter how athletic or talented one might be, everyone is striving to be like the ‘skinny girls.’ ... We are fighting a battle against ourselves.”
For Rufener, change started when she was required to take a physical-education class at Oregon State and, as a result, started running: first 5 minutes at a time, then 10, then 15. She can now run marathon distances and is impressively strong. She stands 5 feet 6, weighs 130, and can leg press 300 pounds.
Her business consists of doing intense one-on-one training with women (and men) who, for the most part, are non-elite types who want to eat better and be more fit for their weekend recreational pursuits. To put it mildly, Rufener gets excited about her calling. “Like I say on my site, a real woman with muscles is someone who exudes beauty from the inside out,” she says. “Flex your inner muscles, become strong and confident. Live it, feel it, be it! Live the beauty of being strong!”
Uh oh. Will she get in trouble for saying that?