Tough Mudder Threatens Local Rotary Club Over 'Significant Use Of The Color Orange'

from the it's-the-new-black dept

While most minds will naturally recoil at the idea of a single company getting a trademark on an entire color for use in a certain marketplace, it’s a thing that exists. And it exists widely enough that even smallish entities are getting in on this game. Far from the game T-Mobile likes to play in pretending it owns all uses of the color magenta in every market, it’s becoming more common to see lesser known companies trademark base colors such as purple and yellow for their markets. If the idea that these basic colors can be locked up commercially in this way strikes you as laughable, your antennae are tuned correctly.

But as this goes is useful in one particular way: it produces some truly hilarious content from the lawyers when it comes to enforcing these broad color trademarks. The most recent example of this would be Tough Mudder Inc., the company that collects money from people who want to run an obstacle course, which sent a threat letter to a local Rotary Club for putting on its own charity obstacle run and daring to use a color you just might recognize as common.

Members of the Raymond Area Rotary Club are seeing red after being warned that the club’s use of the color orange to promote its upcoming Thunder Run 5K obstacle race violates a trademark held by Tough Mudder Inc., a large organization that holds similar obstacle races worldwide.

In his email, Tough Mudder associate counsel Michael Rosen wrote that the club had engaged in “significant use of the color orange” on its website, “As you probably know, we have an obligation to police our intellectual property. Accordingly, we have a federal trademark to such color in connection with obstacle course mud runs, so we are kindly asking that you refrain from such significant use on your website,” Rosen wrote in his email.

A concern about a “significant use of the color orange” is one of those things that only an out of control trademark culture can produce. In no other arena would that kind of silliness be tolerated, but because the Trademark Office has declined to exert even the barest amount of scrutiny on the matter of trademarking colors, here we are. By the way, here is an image of the “offending” site side by side with that of Tough Mudder.

If your face isn’t in your palm at this point, it should be. The folks at the Rotary Club are understandably irritated. And they chose to let it show when communicating back to Tough Mudder Inc.

Rotary member Joe Pratt, the Thunder Run course director, was surprised to hear from Tough Mudder.

“My first reaction was amusement, and I was impressed that we would show up on their radar,” said Pratt, a Nottingham resident.

Pratt fired off an email response to Tough Mudder that said, in part, “I’m going to put off an admonishing call to our pro bono webmaster since I am fairly certain you boys are not going to spend significant assets or energy to deal with the laughable implication that we are encroaching, through color trickery, on your trademarked intellectual property. It is somewhat disconcerting that in David and Goliath form it is possible to litigate against a nonprofit that has a primary goal to eradicate polio worldwide.”

It’s hard to say the snark in the email is undeserved. This is the problem with allowing base and common colors to be trademarked in this way. It’s one thing is some specific shade of a color has gained significance in the marketplace, but nobody equates the color orange with Tough Mudder. Orange is orange.

To that end, the Rotary Club has said it isn’t changing its coloration for this year’s event, though it might for future events.

Pratt said the club might consider changing the color for next year’s event, but not this year.

“If we have to go to mauve or burnt cayenne, maybe we will next year,” he said.

Funny, but sad.

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Comments on “Tough Mudder Threatens Local Rotary Club Over 'Significant Use Of The Color Orange'”

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Anonymous Coward says:

Re: Re: 2 differernt colors

“Change one number on the RGB scale, and it is not infringing.”

No, that’s just not the case, and shouldn’t be. You can’t change one letter on something and claim it’s not infringing (imagine someone calling themselves “Tough Muder”, for example) and you can’t change the least significant digit on a color and say it’s therefore not infringing. You could still get consumer confusion.

However, in this case, more than one number in the color is changed. Thunder Run’s “orange” is significantly redder, to a noticeable degree. If color alone is to be enforced as a trademark, it does need to be confined to a particular shade, or nobody else would be able to use any color once 16 or so companies claimed them.

tom (profile) says:

There are a few NCAA institutions that use Orange as part of their official school colors and they also do sports. Given the number of TM and (c) type marks on the various NCAA school logos and publications, Mudder had better watch out or they may get dog piled by school lawyers. Competitive obstacle course running for profit might be close enough to a sport to be a TM violation.

Anonymous Coward says:

Then again, as any graphic artist will tell you, there is no such color named orange. It is a specific hue, with tint or shade, and temperature.

They could argue that they have trademarked a color identified by it’s Pantone number.

Or maybe their orange is cantilope, and the new guys are using papaya whip.

Fun with colors!

Roger Strong (profile) says:

What stops a lawn & garden company from trademarking the color green in their industry? Is it a “prior art” thing, all the other companies in their industry already using green?

Because a quick Google image search on [mud race orange] shows a lot of ads, banners, t-shirts etc. for non-Tough Mudder mud races. Another search on [monster truck mud orange] shows a whole lot of trucks, T-shirts, ads, etc. for trucks in mud obstacle courses.

Anonymous Coward says:

I'll Be Honest...

I read the story and immediate thought this is bull. However, I’ve been to Tough Mudder’s website numerous times in the past because I have a friend who runs them every year.

When I got to the attached screenshot, I’ll be honest, if I were going to this website, I’d be looking at this page and scrolling around looking to see if it was part of their organization. The white background screenshot of the tough mudder website is not the one they used the last time I was on the site, it was an orange and black design that looked similar to the Thunder one. I went to the Wayback Machine just now and browsed a few historical captures of the page, and it appears the white background was switched to in 2015. Before that it was orange along with black/gray, like the screenshot above.

Don’t get me wrong, I think their description is horrid, I don’t think a color should be trademarkable, but I can actually see their point. The website immediately to me looks like it’s for an event from Tough Mudder. I’d be confused, and that’s the point isn’t it?

John85851 (profile) says:

Uncle Ben's rice

The Though Mudder people should probably go after Uncle Ben’s rice also.
I was watching TV the other night and I saw a commercial for Uncle Ben’s rice and there was a little notice at the bottom of the screen saying “The color Orange and Uncle Ben’s is trademarked”.

I can’t wait until all these cases go to trial and these companies argue over why they can own a specific shade of orange.

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