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, www.thunderrunnh.com. “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.


Reader Comments

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  • icon
    That Anonymous Coward (profile), 12 May 2017 @ 12:02pm

    IP, its gonna destroy the world eventually.

    reply to this | link to this | view in chronology ]

  • icon
    Jeff Green (profile), 12 May 2017 @ 12:09pm

    Someone trademark brown in this market then sue Tough Mudder if their competitors get dirty!

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 12 May 2017 @ 12:46pm

    Oh boy

    Intellectual property theft is a thought crime.

    /snark

    reply to this | link to this | view in chronology ]

  • icon
    TechDescartes (profile), 12 May 2017 @ 12:50pm

    Knock, knock

    Who's there?
    Orange.
    Orange who?
    Orange you gonna pay up?

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 12 May 2017 @ 12:54pm

    There's another point to be made here. They explicitly stated that they are Required by law to defend their trademark. The real issue is that such trademarks should never be granted.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 13 May 2017 @ 8:31am

      Re:

      Except they're NOT required by law to defend their trademark. That's the big lie that the IP police always trot out first... While such trademarks shouldn't be granted, Tough Mudder shouldn't be such whiny little bitches...

      reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 12 May 2017 @ 12:55pm

    Orange is the new Trademark.

    reply to this | link to this | view in chronology ]

  • icon
    PlagueSD (profile), 12 May 2017 @ 12:57pm

    2 differernt colors

    Taking a sample from the websites using "color picker" and comparing them, I have determined the color "Orange" is not the same.

    Thunder Run
    RGB - 235,102,6
    Hex - #EB6606

    Tough Mudder
    RGB - 227,126,54
    HEX - #E37E36

    reply to this | link to this | view in chronology ]

    • icon
      Ninja (profile), 12 May 2017 @ 1:13pm

      Re: 2 differernt colors

      Oh awesome, so there are a few million colors in the visible spectrum that can be copyrighted. That's enough trademark fun for the next millennia!

      reply to this | link to this | view in chronology ]

    • icon
      Anonymous Anonymous Coward (profile), 12 May 2017 @ 1:19pm

      Re: 2 differernt colors

      Interesting thought. If a color is trademarked, it has to be clearly defined. Change one number on the RGB scale, and it is not infringing. Chaos ensues, not that it isn't already.

      reply to this | link to this | view in chronology ]

      • identicon
        Anonymous Coward, 12 May 2017 @ 2:20pm

        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.

        reply to this | link to this | view in chronology ]

  • icon
    tom (profile), 12 May 2017 @ 12:59pm

    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.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 12 May 2017 @ 1:28pm

    Kodak Yellow.
    Tiffany Blue.
    Home Depot Orange.
    Some of the more recognized, and long established color trade dress marks.

    But tough murder has been suing other races for years based on colors, and usually not winning.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 12 May 2017 @ 1:34pm

    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! en.m.wikipedia.org/wiki/Shades_of_orange

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 12 May 2017 @ 1:43pm

    Orange color is a registered trademark

    Just don't use Reese's Orange. http://i.imgur.com/UHwOtAe.jpg

    reply to this | link to this | view in chronology ]

  • icon
    Roger Strong (profile), 12 May 2017 @ 1:59pm

    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.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 12 May 2017 @ 2:02pm

    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?

    reply to this | link to this | view in chronology ]

  • identicon
    AricTheRed, 12 May 2017 @ 2:19pm

    So a buddy invited me do do one of these events...

    So this friend of mine wanted me to do a toughmudder with him & he was bragging about how badass it is.

    I told him..

    "No thanks I graduated bootcamp in 1992, but you have fun."

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 12 May 2017 @ 3:27pm

    I wonder if this copyright applies to colorblind people.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 12 May 2017 @ 4:29pm

    How much general use is required for a trademark to be considered legally generic'd, a la Band-Aid or Xerox?

    reply to this | link to this | view in chronology ]

  • icon
    afn29129 (profile), 12 May 2017 @ 4:35pm

    Nobody here has noticed yet....

    Nobody here has noticed yet....but Rotary Intl logo is orange and they have probably been using that particular shade of orange for decades longer than Thunder Run's grandma was born.

    reply to this | link to this | view in chronology ]

  • identicon
    Frank Jr, 13 May 2017 @ 12:54am

    Well... the tough mudder

    gonna hate The Netherlands

    reply to this | link to this | view in chronology ]

  • icon
    McGyver (profile), 13 May 2017 @ 10:30am

    Hey, while they are at it sue citrus trees and the prison system for excessive use of orange too... What kind of an insignificant bullshit company does this... Oh yeah, those guys.

    reply to this | link to this | view in chronology ]

  • icon
    John85851 (profile), 15 May 2017 @ 10:36am

    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.

    reply to this | link to this | view in chronology ]


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