EAT SLEEP RACE vs Nissan’s #eatsleepRACErepeat

To start, I’ll mention that I’ve been a fan of Nissan and still am today. Both my brother and partner are proud owners of Nissans.

My name is Brian Mabutas and I graduated with honors from Rutgers Business School in NJ with a degree in Marketing in 2007. As an entrepreneur and small business owner, I now realize a law degree focused in trademark law would have been beneficial to protect myself from issues such as the one I’m going to explain.

I created a design in 2002 that inspired the logo for my brand EAT SLEEP RACE that I filed as a business in 2007. When I created the original design I had no intentions of developing a brand or a business. I was part of a grassroots drag racing team based out of NJ. The design was originally for our team t-shirts that we would wear at events we competed in. The meaning of the design is straightforward, and it stands for the lifestyle we live. For years, people would ask if they could purchase the t-shirts and stickers, but we were strict on just keeping it exclusive for our team. Years later, I started to notice vendors at the events selling products that had EAT SLEEP _______ they replaced the “RACE” to Honda, Mitsubishi, Ford; which doesn’t even make sense because you can’t EAT SLEEP FORD. At that point, a light bulb went off in my head and it made me realize that other people were making money off of my idea.

This led to me starting a brand that combined what I loved– cars/racing, kicks/clothes and graphic design. The brand started with 2 t-shirts that I sold out of my trunk at local events while I was in college and working several part-time jobs. The shirts sold quick and I reinvested the profit to create more inventory. I outgrew storing the shirts in my parents’ garage and moved the inventory to a friend’s basement. Even though the shirts and stickers were selling, I needed financial help to place an order for a collection of 8 designs. So a few months later I asked my brother and a friend if they wanted to become my partners and we ended up renting a garage for storage of the new products at a local lumberyard.

As cliche as it sounds, I’ve put blood, sweat and tears into this brand. Even though I went to college for business, most of what I now know I learned from hands on experience. I taught myself pretty much everything about the business: graphic/apparel/web design, sourcing manufacturers, finance, sales and the list goes on.

I defined a lifestyle lived by racers around the world and I have an enormous amount of pride for what I created. One of my very first investments outside of inventory was filing my US trademarks and business in NJ. With little to no money this was a costly investment but I thought it was everything I needed to protect myself and my brand. I was wrong.

Let’s rewind to 2014. I came across the following image that was reposted by several media outlets:
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When I saw the text in the top left, my heart dropped. I couldn’t believe that Nissan used what I created.

By the time I saw this announcement they’ve already gone full blown with their marketing campaign. I did a quick search on Instagram and Google and I found dozens of photos with #eatsleepRACErepeat. I immediately contacted my lawyer and sent over the photos as “evidence.” For as much pride as I have for what I created, as weeks past I would constantly search Instagram and Google and get anxiety as I found more photos.

Here are a few of the photos that I saved as “evidence” (I can’t imagine the amount of money Nissan spent on promoting this #eatsleepRACErepeat campaign):

PLACEMENT ON RACE CARS AND TRANSPORT VEHICLES:
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PLACEMENT ON CUSTOM BUILDINGS AT RACES AROUND THE WORLD:

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PLACEMENT ON CUSTOM DISPLAYS AND SIGNAGE AT RACES AROUND THE WORLD:

 

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IMG_1103

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PLACEMENT ON TRACKSIDE SIGNAGE ON SOME OF THE WORLD’S MOST FAMOUS RACE TRACKS:

 

MarkSmyth

Confused

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PLACEMENT ON WEBSITES:

 

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It’s now March of 2016. Nissan promoted this #eatsleepRACErepeat campaign in 2014 and 2015 and received all types of media coverage from around the world.

Aside from my business partners and a few close friends, I never told anyone what was going on. Honestly, it’s because I’d get severe anxiety every time the topic or thought came up.

Some comments/questions I would frequently hear from supporters were:
– “Did you see Nissan stole your idea?”
– “Is Nissan paying you guys to use your name?”

These particular ones were the most discouraging from people who haven’t heard of our company before:
– “Didn’t Nissan come up with this?”
– “You guys jacked this from Nissan.”

Just to give you my perspective on this, I get anxiety over the issue because of the amount of pride I have for what I created. What’s tough is my mind keeps thinking it’s the principle that matters. Well it doesn’t.

Compare us to David and Goliath. EAT SLEEP RACE, LLC and I are David and Nissan is clearly Goliath. Truth is, EAT SLEEP RACE, LLC is an extremely small business compared to the world-renowned corporation, Nissan.

To go into detail, I think it’s best to address the most interesting feedback I’ve received:

1. You should be happy that you’re getting free exposure around the world.
I feel exactly the opposite. Nissan is world-renowned and, clearly, has the finances and ability to expose race fans around the world to #eatsleepRACErepeat. On the other hand, EAT SLEEP RACE, LLC is a small business and we currently don’t have Nissan’s capabilities. As EAT SLEEP RACE, LLC continues to grow, those individuals who were first exposed to Nissan’s #eatsleepRACErepeat campaign but have never heard of us could automatically assume we’re knocking off Nissan’s idea. Devoted Nissan fans have said this directly to my face, and I’ve had to educate them with the truth. There are also the die-hard Nissan haters, who could refuse to support EAT SLEEP RACE, LLC because they think we’re affiliated with Nissan.

What Nissan did in 2014 and 2015 – taking their marketing campaign to all of the World’s best races and exposing the hundreds of thousands of attendees to their brand – is something I dreamed of doing one day. Now, I fear if we ever get the opportunity, the attendees will think we’re knocking off of Nissan. Think about it; if you’ve never heard of my brand EAT SLEEP RACE but saw Nissan using #eatsleepRACErepeat in 2014 and 2015, what would your first thought be if you ever came across my logo?

2. They’re not selling t-shirts like your business does.
Did you know that Nissan Motor had a lawsuit against Nissan Computer (named after its founder and current president, Mr. Uzi Nissan) for Trademark Infringement and Trademark Dilution? Nissan Computer was named after his family name and sold personal computers and was created while Nissan was still known as Datsun selling cars in the US. More details of can be found on NISSAN.COM. In our case, Nissan Motor and EAT SLEEP RACE, LLC are both marketing in the motorsports industry to motorsports enthusiasts. I’m concerned this can limit our market because people who haven’t heard of EAT SLEEP RACE but have seen #eatsleepRACErepeat (several hundred thousand around the world) are misled to think that Nissan started it.

3. They didn’t copy you. They got the idea from Fat Boy Slim’s song EAT SLEEP RAVE REPEAT.
Lets look at the time line. I created a design in 2002 that translated to EAT SLEEP RACE. In 2007 I filed the business and designed the logo that I trademarked in 2007. Fat Boy Slim created his song EAT SLEEP RAVE REPEAT in 2013. Is it possible that Fat Boy Slim came across our brand/logo and that inspired him to make his song in 2013? That’s for another conversation. The issue I have here is that Nissan responded that they PURCHASED the rights from Fat Boy Slim. A response from their lawyers states, “Nissan of course did not use the term “RAVE” as such use would have made no sense in the context of motorsports racing.” My trademarks and brand EAT SLEEP RACE are the first 3 words in their campaign and EAT SLEEP RACE, LLC was established way before this song was released. So I requested that Nissan license and purchase rights to use EAT SLEEP RACE and I was denied.

4. Nissan never heard of your brand EAT SLEEP RACE.
Nissan has a slogan: “Nissan. Innovation that excites.” As innovators wouldn’t you do due diligence to make sure what you’re creating isn’t already created? Type “eat sleep race repeat” into Google’s search box and you’ll see http://www.eatsleeprace.com show up as the first result.

5. They’re 2 totally different things.
This one makes me scratch my head, but I’m biased because I created this very unique name. EAT SLEEP RACE defines a lifestyle for motorsports enthusiasts. The way to promote our brand on social media is to hashtag our business name, so we use #eatsleeprace. What are the first 3 words of #eatsleepRACErepeat? The purpose of booth of our marketing efforts is to reach motorsports enthusiasts.

6. Sue them.
This is easy to say without knowing the process. I’ve worked with my attorney starting in May of 2014 for about a year and we exchanged communication with Nissan’s lawyers stating the facts.

To summarize pages of communication, the trademarks that I filed were not enough to protect EAT SLEEP RACE, LLC in this case. Instead of checks for the licensing fees I requested, all I got were bills from my lawyer’s office with cringe worthy “total due” amounts.

The first response we received from Nissan ended with: “Under the circumstances, we do not see how Nissan’s limited use of this phrase is in any way violative of any trademark rights your client may have in the mark EAT SLEEP RACE for the goods described in the two registrations owned by Mr. Mabutas.”

A later response we received from Nissan ended with: “To conclude, we specifically reject your request to pay your client any licensing fee… Those efforts, combined with our representation to not use the Hashtag in the U.S. in the future, is in our view, sufficient to consider the matter closed.”

What’s the result? This was an expensive lesson learned.

After a considerable amount of anxiety and distress, here’s what I learned from this costly experience (most I’ve heard in the past and, now, have experienced it first hand):
– Lawyers are costly.
– The principle of the matter doesn’t matter in law.
– Pride costs.
– Trademark law is complex.

So what’s next? Addressing my fears and concerns of reaching our potential market around the world head on. We’re going to continue moving forward with our business with the same goal of growing our brand around the globe but now with the challenge to let people know that we’re the original EAT SLEEP RACE. Maybe Nissan will acknowledge my existence and I get to meet whoever came up with their campaign. We clearly have a very similar thought process.

Some things I find extremely ironic:
– We have the same color ways (EAT and SLEEP are black and RACE is RED)
– For my very first designs, I would write the brand as eatsleepRACE until it progressed to EAT SLEEP RACE. Nissan writes theirs as #eatsleepRACErepeat

I’m still a fan of Nissan and all of the Nissan Skylines are still on my wish list of cars to fill my “dream” garage.

If you have any feedback or questions, comment on the latest post related to this article on our instagram page @eatsleeprace

Want to support the original EAT SLEEP RACE? Visit: http://www.eatsleeprace.com

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