Yale University has sent an unwanted namesake a stinging letter of rejection – in the form of lawsuit.
The school alleges in federal court that Yale Academy, a college counseling and SAT preparatory service, engaged in trademark infringement, cybersquatting and consumer fraud by using Bulldogs blue and white on its website and otherwise suggesting an affiliation.
On Monday, five days after the suit was filed in Camden, the academy announced on its website — yaleacademy.com — that it is changing its name to Y2 Academy to avoid any confusion.
Yale University wants more than that. The suit asks for an accounting of all gains, profits and advantages derived from the alleged infringement; compensatory and punitive damages; and attorney fees and statutory damages for cybersquatting, along with a transfer of ownership of the web domain.
It also seeks preliminary and permanent restraints against use of the name Yale and an order requiring the destruction of all signage, advertising and promotional materials using the terms Yale or Yale Academy.
Yale Academy was founded in 1995 in Cherry Hill, and since May 2012 has opened franchises in Secaucus, Edison, Plainsboro, North Wales, Pa., Upper Darby, Pa., and Hockessin, Del. Last March, it applied to the U.S. Patent and Trademark Office for a trademark of its name and logo.
According to the suit, Yale Academy targets as customers Asian families for whom English is not a primary language and who are likely to be misled into believing a relationship between the academy and the university exists.
The suit alleges that Yale Academy’s website makes unsubstantiated claims — stating, for example, that buying its test-preparation services will provide a guaranteed 400-point SAT score increase. The academy also offers IVY Plus Membership, a college-admissions consulting service it claims "will provide you the acceptance letter" at one of the "top 45 universities and colleges."
The suit, Yale University v. Yale Academy, 13-cv-2964, alleges statutory and common-law trademark infringement, false association, unfair competition, violation of the Anti-Cybersquatting Consumer Protection Act, statutory and common-law unfair competition, violation of the New Jersey Consumer Fraud Act and unjust enrichment.
Charles Riddle, a Scranton, Pa., intellectual property lawyer for Yale Academy, confirms the name-change announcement was made "recently" but declines to discuss the case.
The academy’s director, Terry Yang, did not return a call.
Yale’s attorney, Janet Satterthwaite of Venable in Washington, D.C., says the academy’s announcement of plans to change its name to Y2 Academy is “a good start” and shows “the lawsuit has been fruitful.”
But she says the university is still negotiating with the academy and there are “some unanswered questions about some of the activities,” although she declines to elaborate. She adds that “the problem looks like it is going to be resolved.”
University press secretary Tom Conroy invited submission of written questions but did not reply to them.
Charles Toutant is a reporter for the New Jersey Law Journal, a Legal affiliate.