Trademark Guidelines and Managing Infringement

A clear distinction should be made between use of the trade or service marks and use of the trade or company names

1. The Outward Bound Trust (UK) uses for its trading name The Outward Bound Trust. For some of its operations, particularly the provision of many of its specialized goods and services, the company is divided into sections. Each of these trading sections has its own individual trade name. They should be used as nouns and appear in normal print without the trade mark designation, further information can be obtained from:

Outward Bound Trust
207 Waterloo Rd.
London, England, SE18XD
United Kingdom

2. Trade or service marks should be claimed.

• Do this by placing the symbol in a circle or an asterisk by the first use of the trade or service mark in the heading, title or text and accompany it by the legal phrase:
  
  
"Outward Bound and (logo) are registered trade and service marks of The Outward Bound Trust that is a Registered Charity (number 313645) and a Company Limited by Guarantee (registration number 405180). The Trust's registered office is at 12 Plumtree Court, London, EC4A 4HT."


• Always use this phrase in the same style and always at the bottom or on the back of the material. Report any misuse at once.
  
• Alert Outward Bound International of all failures to implement these rules.
  

3. The Outward Bound logo/device/symbol is also a trade and service mark. In the case of all material, marketing or otherwise, and particularly on labels and invoices and including merchandise such as T-shirts and mugs.

As such, it must also have the symbol in a circle as shown. The device should only appear in one colour on an appropriate background so that it is easily recognizable; it should not be placed in a frame and should not take the place of the letter "O" (such as in "Outward Bound"). The orientation should be vertical, and the size and quality of production must ensure that the words "Outward Bound" in the logo top section and the compass points N, E, S, W are clearly legible. The adopted corporate style of the U.K. Outward Bound Trust does not include the motto "To Serve, To Strive and Not to Yield."

International Applications

INTRODUCTION
The foregoing was written specifically for The Outward Bound Trust of the U.K., but, in general, should be observed by and is relevant to Outward Bound organizations throughout the world, subject to specific national law and regulations. In addition, Licensees should acknowledge ownership of marks: other affiliates should acknowledge their relationship to the Outward Bound® International organization.

All relevant literature of a standard licensee should contain an acknowledgment of the licensor's ownership of the trade (an service) mark. For example, in Bermuda the correct acknowledgment would read:

"The Outward Bound words and device marks are the registered trade marks of The Outward Bound Trust , 207 Waterloo Rd. London, SE18X D, UK and are used by 'Outward Bound for the Youth of Bermuda' under licence."

If an Outward Bound body has not been licensed under the current system, but has been licensed/chartered with an exchange of letters after the Cooperstown Conference in 1988, an acknowledgment of its relationship to the international organization should be stated. Using Colorado Outward Bound School (COBS) as an example:

"The Outward Bound words and device marks are registered trade and service marks and the Colorado Outward Bound School is part of the Outward Bound International organization."

UNREGISTERED MARKS MUST BE ACKNOWLEDGED

IN THE CASE OF AN UNREGISTERED MARK, THE LETTERS TM SHOULD BE USED AND AN APPROPRIATE STATEMENT APPENDED. FOR EXAMPLE, IN A COUNTRY WHERE THE DEVICE MARK IS STILL BEING APPLIED FOR:

THE LETTERS TM SHOULD APPEAR NEXT TO THE DEVICE, AND AT THE BOTTOM OF THE DOCUMENT SHOULD APPEAR THE PHASE, "THIS DEVICE IS A TRADE MARK OF THE OUTWARD BOUND TRUST LIMITED..."

Guidelines for Dealing with Trade Mark Infringement OVERVIEW

One of the responsibilities of holding an authority to use the "Outward Bound" name is to protect that name from use by unauthorized persons or organizations.

These guidelines are intended to explain the sort of steps that Outward Bound schools should take in order to safeguard the name. However, they do NOT offer an alternative to proper legal advice for the specific circumstances of each infringement/misuse.

OUTWARD BOUND GOODS AND SERVICES
The name "Outward Bound" and the compass device have been registered (or are in the process of being registered) as trade marks in almost every country of operation. Trade marks are registrable in a variety of classes of goods and services and examples of classes in which registration might have been obtained include:

• Class 9 (including software, CDs)
• Class 16 (including books, posters, magazines, printed matter)
• Class 18 (including rucksacks)
• Class 20 (including sleeping bags)
• Class 24 (including flags)
• Class 25 (clothing, footwear, headgear)
• Class 39 (including the services of rescuing people, organisation and arranging of trips)
• Class 41 (including educational, recreational and training services)
• Class 41 (including advisory and consultancy services offered in connection with educational, recreational and training services).

PRIMARY SUPPLIERS (I.E. COMPETITORS)
Unauthorised use of the name "Outward Bound" or a variant that suggests that name for goods or services identical or conceivably similar to those detailed above should be objected to. That objection might be based on a trade mark registration and/or an equivalent common law right (see further the section headed "Points for Secondary Misusers" below).

Failure to object encourages dilution of the exclusivity in the "outward bound" name and compass device. Examples of use of similar names that, following objection, have been successfully eliminated and/or regulated by agreement include:

outward hound, outbound, outward challenge and outdoor bound.

SECONDARY MISUSERS
The section above deals with primary suppliers (such as competing providers of experiential learning through outdoor pursuits or suppliers of outdoor equipment). Another and rather different way in which the "outward bound" name is misused is when third parties such as newspapers incorrectly use the name in connection with events/courses not originating from members of the Outward Bound movement. For example, in the UK some years ago newspapers reported drownings in a canoe accident as having taken place on an "outward bound expedition" (whether with or without initial capital O and B) when in fact the expedition in question had not been organised by Outward Bound UK.

It is very important to challenge all such misuses from secondary users.

THE INTERNET
Both primary suppliers and secondary users might publish their misuses over the internet. These misuses, if they remain, could be a cause of confusion for those searching for the genuine article. They might also be relied upon by people whom it suits to argue that "outward bound" is not an exclusive name.

STEPS IN STOPPING INFRINGEMENT/MISUSE
While normally the first objective is to as rapidly as possible stop the infringement from continuing, whether or not damages will be sought will depend on the precise circumstances.

• In some circumstances (particularly where the complaint is directed to a secondary user), there may not be any harm in making an immediate phone call followed by a letter demanding an immediate cessation and publication of a correction/apology while saying that damages may be sought. If an assurance were obtained in writing from the infringer, this might achieve the desired result.
  
• In cases of misuse by publications with a large circulation, legal counsel should be consulted and they should be asked to send a letter to the infringing party in addition to any direct telephone or written contact that may have occurred. This is particularly important if the complaint is to a primary supplier and/or damages are to be sought.
  
• The only legal counsel authorized to act for Outward Bound on trade mark infringement cases anywhere in the world is:
  Peter Lipman
  Humphreys & Co
  14 King Street
  Bristol
  BS1 4EF
  United Kingdom
  
  Humphreys & Co will try their best to minimize expenses and will usually appoint a local counsel that specializes in trade mark law.

POINTS FOR SECONDARY MISUSERS
It is not possible to provide an exact template letter to secondary misusers, as the precise contents of any letter will depend upon the facts and the law in each case. However, if writing to a secondary misuser (such as a newspaper) the following points should be borne in mind:

• Only Outward Bound UK and its internationally licensed affiliates have the exclusive right to use the "outward bound" name and compass device; no-one else has any right of use.
• They have accrued significant goodwill and reputation in that name and device, which are true indications of origin.
• The misuse complained of is damaging and misleading.
• A correction along the lines of that set out below should be published.

  OUTWARD BOUND
  In our [insert details] edition we mistakenly referred to an "outward bound" [or upper case or hyphenated as appropriate] course [school, event] when writing about an outdoor pursuits course [amend as necessary] in which [insert details]. In fact only The Outward Bound Trust in the United Kingdom and its internationally licensed affiliates operate "outward bound" courses and "outward bound" is their registered trade mark [if this is correct for the jurisdiction in question; if not put "their trade mark"] for personal development training through outdoor pursuits. We apologise for our mistake.

• An apology/correction referring to the trade mark as being "Outward Bound", if proffered, should not be accepted. The exclusivity which attaches to the trade mark is in respect of "outward bound". Although we apply initial capital letters to the words comprising the name, the trade mark itself is written in all lower case as "outward bound". Be aware of this important distinction!

CATCHING A CULPRIT-EXAMPLES OF MISUSE OF THE OUTWARD BOUND NAME

1. Outward Hound: A company that has outdoor products for dogs desisted use of the name "Outward Hound" as their company after a letter from Outward Bound USA.
2. An organization competing with Outward Bound Sri Lanka offering "Outward Bound" programs stopped using the words after they received a legal letter from Outward Bound International and Outward Bound Sri Lanka.
3. Damages were collected from a clothing manufacturer that used Outward Bound illegally in a marketing campaign in Europe.

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