Higher Ed's Trademark Track

Higher Ed's Trademark Track

An abbreviated version of this article appears in the May 2014 issue of Corporate Counsel.

So much for the hallowed halls of academia.

Colleges and universities have been amassing a trove of registered trademarks in recent years—and not just for the traditional marks that represent their names and athletic team insignias.

Increasingly, these institutions are trademarking slogans or the names of academic and research programs, designations that seem more general and descriptive than the usual source-identifier receiving protection under the federal trademark law known as the Lanham Act. Incredibly enough, “first-year experience,” “fast-track MBA” and “student life,” for example, are all registered trademarks owned by institutions of higher learning.

“Universities, like for-profit busi­nesses, have come to realize that intellectual property is a potential source of revenue,” says Jacob Rooksby, a professor at the School of Law at Duquesne University. “And as higher education struggles with skyrocketing costs, schools have begun looking for ways to monetize their intellectual property.”

Most of this has taken place in the realm of patents, but universities discovered years ago that their names are also a valuable commodity. Trademarks, they found, can help preserve that value and even increase it. Collegiate licensing, for example, has become a $4.6 billion industry. Schools generate royalties by licensing to apparel companies the use of their name, their athletic team name, their logo and their insignia—all of which are trademarked. In college towns across America, these marks frequently appear on sweatshirts, hats, notebooks and pens.

But evidence suggests that trademark registration in higher education has gone beyond institutional identity protection and revenue generation through licensing.

The University of South Carolina, for example, has a federal trademark registration for the term “first-year experience” as used in relation to educational services. That means other schools might want to think twice about using the phrase to describe a student’s initial year.

Eastern University in Pennsylvania has laid claim to the phrase “fast-track MBA” in connection with educational services. So even though many other schools offer an accelerated MBA program, they may decide to shy away from using the term “fast-track MBA.”

The University of Texas has a trademark registration for the phrase “we’re conquering cancer.” Clearly, other research universities are finding ways to combat cancer, but they might not want to advertise their successes with that phrase.

Other examples of trademark registrations owned by colleges include “student life” (Washington University in St. Louis), “students with diabetes” (University of South Florida), “one course at a time” (Cornell College), “touched by a nurse” (University of Colorado), “be the difference” (Marquette University), and “cure violence” (University of Illinois).

“Some of these marks and the exclusive rights they represent threaten to undermine the public-serving soul of nonprofit higher education,” says Rooksby, who undertook an in-depth study of trademarks in higher education and will publish an article on the subject in the May issue of the Harvard Journal of Law & Technology. “Many of these institutions say they will not actively enforce these trademarks, but just by having them, they threaten to chill expression and free speech.”

There are now more than 10,000 active marks registered to colleges and universities at the U.S. Patent and Trademark Office, according to Rooksby. And since 2000, the registration of slogans for an institution or a program run by an institution has risen significantly. Rooksby’s/ research revealed that registration of slogans accounted for 1.8 percent of all college and university trademarks registered in the decade between 1990 and 2000. In the 10 years between 2000 and 2010, it jumped to 6.2 percent. And in the period between 2010 and 2012, 181 slogans received trademark registrations—7 percent of all trademarks registered to colleges and universities in that time.

The primary purpose of a trademark registration is to allow consumers to quickly identify goods or services that are affiliated with a source they have come to recognize. When trademark owners believe other goods or services are presented in a way that may lead to consumer confusion or sully the mark holder’s reputation, they can sue for trademark infringement and hope for injunctive and monetary relief.

For years, universities have been using trademarks to protect their names and related insignia and logos—even suing on occasion when they believe the school name is being used in a manner that will diminish its reputation or create consumer confusion. And since the 1970s, they’ve benefited by monetizing their marks through collegiate licensing programs. But some institutions are evidently taking their trademark monetization efforts to a new level.

In 2013, for example, East Carolina University sued computer networking giant Cisco Systems Inc. in U.S. district court in the Eastern District of North Carolina. The university holds federal trademark protection of the phrase “Tomorrow Starts Here” as used in relation to “education services in the nature of courses at the university level.” Cisco used the same phrase in a marketing campaign, although it was not related to courses or education services.) That case is still pending.

Texas A&M University owns two federal trademark registrations for the phrase “12th Man”—a term used in football to refer to a team’s fans, who support the 11 players on the field. When the Seattle Sea­hawks used the term in a marketing campaign before the 2006 Super Bowl, Texas A&M sued them for trademark infringement.

The teams reached a settlement, under which the Seahawks agreed to pay the university $100,000 up front and $5,000 annually for five years. In 2011 it renewed the deal for another five years at $5,000 per year, according to press reports. Recent reports say the parties are negotiating to renew the licensing deal when it expires in 2016, although the fee is expected to be much higher.

But it’s not just universities feuding with big corporations or professional sports teams. In 2010 the University of Florida sent a cease and desist letter to Glades Day School, a private K-12 school in the poor farming community of Belle Glade, Florida, demanding that the school stop using a particular alligator logo in connection with its athletic teams. The university said it too closely resembled the university’s logo.

“Never mind that Glades does not compete with the University of Florida in athletics (or anything else), or that it had been using its gator logo—without objection from the university—since the school’s founding in 1965,” Rooksby wrote in his law review article.

The school decided to change its logo, at a cost of $60,000, rather than defend a pricier lawsuit, The New York Times reported at the time.

In some cases, universities appear to be thinking of their trademarks as a way to control entire market references to their institution, Rooksby says. West Virginia University, for example, sued a company in 2012 that was selling blue and gold shirts displaying the phrase “Let’s Go! Drink Some Beers!” West Virginia University is home of the Mountaineers, and it claimed the shirts infringed its rights in the phrase “Let’s Go Mountaineers.”

In its complaint, filed in the Northern District of West Virginia,the university said that phrase, combined with the shirts’ blue and gold colors, was likely to cause confusion as to the university’s affiliation or approval of the product. Rooksby notes that blue and gold are the official colors of the state of West Virginia and that nowhere on the shirts did the university’s name, initials, nickname or logo appear.

The company that made the shirts also sold other products, and West Virginia University alleged that many of those infringed its trademarks as well. Rather than continue to fight in court, the company agreed to stop selling most of the offending apparel. But in the court’s order of dismissal and permanent injunction, the judge said the company retains the right to produce goods bearing “Lets Go! Drink Some Beers!”

Despite these examples, institutions of higher learning are not yet the trademark industry’s equivalent of patent trolls—entities that assert patents for the sole purpose of creating a revenue stream. But the potential to do so is there.

When lawyers discover that a university has registered a phrase or slogan, they are likely to advise clients to avoid that phrase or slogan rather than risk a lawsuit. At the same time, encountering this type of trademark activity will likely prompt more universities to register slogans—and possibly lead them to more enforcement of their marks.

Rooksby argues that universities actually don’t need to register marks for slogans or academic programs because most have no licensing market. He believes they are being “overly exuberant” and that economic forces have pressured university general counsel, who may not fully understand intellectual property, to jump on the bandwagon and register patents and trademarks for everything they can come up with.

Sometimes that exuberance can backfire, as it did in 2012 when the University of Alabama sent a cease and desist letter to Mary’s Cakes & Pastries—a local baker selling Crimson Tide-themed cakes and cookies. The bakery owner, Mary Cesar, said she would stop offering the goods, as she could not afford a court battle. News reports prompted an outcry—even from alumni. The university then apologized to Cesar, saying that she could continue to produce pastries that bear the University’s marks.

“Though colleges and universities increasingly are tied to the market, it should not follow that their behavior must resemble in every respect that of commercial actors,” Rooksby wrote in his law review article.

In fact, he says universities, which are supposed to be places where ideas can be freely tested, should actively refrain from such activity.

“Unfettered speech has long been considered a hallmark of academia,” he says. “But if this trademark registration trend continues, free expression could disappear under the guise of intellectual property protection.”

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