Universities and colleges, although institutions of higher learning, must be prepared to navigate the complicated world of intellectual property, including dealing with their own trademark. A trademark is a name or symbol which identifies a product, service or institution to the general public. Trademarks, while intangible, are considered property, and the rights associated with trademarks are protected by Federal, State and common law. Generally, the first party to use a trademark in commerce is entitled to exclusive use of the trademark. That means the first party to use a trademark can prevent anyone else from using the trademark. This is important, because trademarks can have significant economic value as many consumers make purchasing decisions based upon a specific product or service’s identification with a specific provider.
A university or college’s name, logo and mascot are all trademarks subject to the same protections as any other trademark. University and colleges use their name, logo and mascot on a wide variety of promotional and marketing materials, including everything from letterhead to apparel to intercollegiate athletic facilities. The most common trademark issues that university and college administrators must deal with involve preventing unrelated businesses or organizations from using its name, logo or mascot without permission. The failure to protect against the unauthorized use of a trademark can result in the loss of trademark rights. Universities and colleges have developed licensing program which provide for the use of its name, logo or mascot in exchange for payment of a royalty. Licensing programs allow the university or college to regulate commercial use of its name, logo or mascot, which includes allowing the university or college to police the quality of the products bearing its name, logo or mascot to ensure they reflect positively on the university and college. It has been reported that collegiate licensing annually tops 3 billion dollars in sales and resides only behind Major League Baseball and the National Football League in terms of major sports sales revenue.
Many universities and colleges have been forced to file infringement lawsuits against those businesses or organizations who have appropriated the university or college’s name, logo or mascot without permission. In Board of Supervisors for Louisiana State University Agricultural & Mechanical College v. Smack Apparel Co., Louisiana State University, joined by three other major universities, filed suit to enforce their trademark rights against Smack, a t-shirt manufacturer, who was producing t-shirts using the schools’ colors. The t-shirts also referenced the schools’ sports success. Only one t-shirt actually used a registered trademark owned by Oklahoma. The Fifth Circuit Court of Appeals found Smack’s use of the color scheme, along with reference to the school sports success constituted infringement. In reach this holding the Fifth Circuit reasoned that each of the schools’ long term use of the color scheme had acquired distinctiveness through secondary meaning. The Court also found that the similarity between Smack’s marks and the schools’ marks, the intent to associate with the school, and several of the other Polaroid factors demonstrated a likelihood of confusion.
Universities and colleges have also pursued trademark enforcement actions against other educational institutions who have adopted a trademark which might be considered so similar to their trademark that the newly adopted mark causes a likelihood of confusion as to the source of the trademark. Recently, the University of Iowa successfully prevented the University of Southern Mississippi from federally registering its newly adopted eagle head mascot, despite the common use by many other institutes of bird heads for mascots. Southern Mississippi tried to register its new trademark with the United States Patent and Trademark Office. Iowa objected, claiming Southern Mississippi’s eagle head was confusingly similar to Iowa’s Hawkeye trademark. In finding in Iowa’s favor, the court explained:
Both parties’ marks present the head of a bird of prey facing right, and basically oval in shape. Both contain identical colors. These images are very similar to each other in style and proportion. They both involve a bold profile image of the head of a large bird. That Southern Miss’s eagle may be a bit more literal and fierce than Iowa’s original Hawkeyes mark does not overcome the overall similarities.
Southern Mississippi attempted to argue that Iowa’s mark was not entitled to protection because the field was flooded by a large number of colleges and universities whom had adopted a bird’s head as a mascot. The court disagreed, finding that despite the popularity of using birds of prey, like eagles and hawks for collegiate and professional sports teams, Iowa’s mark had developed sufficient recognition allowing Iowa to develop a zone of protection, which precluded Southern Mississippi’s use of the mark. In reaching its holding, the court also noted that some collegiate logos containing bird heads, also contained literal elements (e.g., the university name, the team name or mascot, or even one or more letters), which arguable reduces the chances of confusion – even among the most uninitiated of sports fans.
The above discussion is not intended, nor does it constitute a comprehensive examination of the issues faced by universities and colleges in connection with either trademarks. Instead, this brief survey simply begins to highlight the significant legal complexities of intellectual property in academic setting. It does however highlight the need post-secondary institutions to take proactive approach in protecting their name, logo and trademark.
Patrick R. Sturdy is a partner in our Livonia office where he concentrates his practice on post-secondary education law, employment and labor law, corporate and business law, and intellectual property. He may be reached at (734) 261-2400 or firstname.lastname@example.org.