In recent months, news headlines have popped up regarding colleges and universities across the United States engaging in trademark enforcement campaigns to protect either logos or standard character marks registered by those academic institutions. This June, the U.S. Naval Academy announced on Twitter that it was working with Navy leadership to send a cease-and-desist letter to Nike regarding the use of a logo which allegedly infringed upon the Naval Academy’s crest design. In July, the Trademark Trial and Appeal Board (TTAB) threw out a trademark registration application filed by a Washington State-based soap company after Texas A&M opposed the mark for using the standard character mark “12th Man,” which is owned by that college. In late August, Ohio State University reportedly filed an opposition against a trademark application filed by the University of Oklahoma which would cover block-shoped “O” trademark that is similar to a logo used by Ohio State.
This activity has drawn a lot of attention and some commentators have gone so far as to decry these actions as “trademark bullying” carried out by powerful university interests and detrimental to the prospects of small businesses. According to trademark lawyer Josh Gerben, founder and principal of the Gerben Law Firm, not every trademark enforcement campaign by a university constitutes bullying. “Universities have a lot of value in their trademarks and they have a legal requirement to police the marketplace to protect their trademarks,” Gerben said. “In some instances, universities just appear to forget about the public relations consequences of taking legal action, and, while the action may be legally justified, it is done in a way that makes the university appear to be a bully.”
Although recent news articles on university trademark enforcement paint the issue as one that has been rising in recent months, Gerben said that university trademark policing has always been at a relatively high level. “Some universities have a history of conducting these campaigns going back decades,” he said. Gerben acknowledged that it was possible that these enforcement campaigns were gaining more attention in the past 10 to 15 years thanks in no small part to the emergence of e-commerce platforms like Amazon or Etsy where individuals can sell homemade items without realizing that they’re at risk of committing trademark infringement. “You might be seeing an increase in activity just because it’s easier to get to the market today than it was two decades ago but it’s an increase in enforcement over time, it’s not a new phenomenon,” Gerben said.
Although merchandise such as hats and T-shirts are certainly a large component of the goods targeted by universities in these enforcement campaigns, the goods that are targeted are not just limited to clothing. Along with the aforementioned story about Texas A&M opposing the “12th Man” soap product, Gerben Law published a blog post last August which discussed the University of Alabama sending a cease-and-desist letter to a local bakery shop making baked goods depicting the Alabama logo. That particular case was a good example of the fine line that universities have to walk when protecting their trademarks. “A trademark owner can’t just let someone sell unlicensed goods, I get that,” Gerben said. “But at a certain point, if it’s a mom-and-pop bakery shop selling a cookie with a logo, does that really require significant legal threats from the university?” Gerben suggested that, in such a case, it might benefit a university to quietly engage the small business in licensing talks that licenses the use of the logo on the baked goods for a small amount of money. This will protect the mark but also not take unnecessary funds away from a local business that is an integral part of the community. At the same time, lawyers drafting the agreement may want to make sure that there’s an upper limit on the baked good sales so that the small business doesn’t make an exorbitant profit on the use of the trademark.
Perhaps the most active academic institution in terms of trademark enforcement efforts might be Duke University, which has filed more than 500 requests with the U.S. Patent and Trademark Office since the beginning of 2017 to slow down or oppose a trademark application filed by another party. These include either opposition filings or filings to extend the time to oppose a mark. By contrast, the University of Alabama has filed 64 such motions since 1982, while Ohio State has filed a total of 112 going back to 1975. “It may just be the nature of the word ‘Duke’ and how more trademarks may use that term than, say, ‘Crimson Tide,’” Gerben said. He added that, while it’s possible that the strength of a university’s sports program could be one factor behind a school’s decision to police marks, larger academic institutions might naturally have both a strong sports program and an effective trademark enforcement program. Still, sports success sometimes spurs a college towards filing trademark applications as was the case earlier this year with UMBC, which filed trademark applications after becoming the first ever 16-seed to beat a 1-seed in the NCAA Division 1 Men’s Basketball Tournament.