College Football (and Trademark Enforcement) Season Has Arrived

It’s college football time again! You may be thinking, “what could college football have in common with trademark law?” Well, whenever a fan sees that colleges name and logo on a helmet or every time a fan buys a t-shirt, hat, Pop-Tarts, pacifiers and, yes, even urns and caskets, the importance and value of that college’s trademarks are on full display. In preparation for the season, we have compiled a list of some trademark-related disputes and fun facts that have impacted colleges and universities — specifically, their athletics departments.

Buckeyes and The Shoe – Ohio State University

Ohio State is involved in a fair share of trademark disputes. The university sued Caesars Entertainment casinos over the trademark ‘The Shoe’.  Horseshoe Casino, owned by Caesars, attempted to protect the term regarding providing concerts and other shows at their venue. Ohio State’s football stadium is known as ‘The Shoe’, and they also host concerts and other events at the facility (in addition to football games).  The case was eventually settled, and Caesars let this mark eventually abandon.

With millions of dollars on the line in licensing, schools like Ohio State tend to target unauthorized apparel makers who use designs consisting of the school’s trademarks.  Lamp Apparel found themselves involved in this type of dispute with OSU over their printing of t-shirts with images that came close to OSU’s trademarks, including the Buckeye leaf, the block ‘O’, and the scripted word ‘Ohio’.  This lawsuit was just filed last month, but Lamp Apparel has removed the offending t-shirts from their website.

OSU, USC & College Acronyms

Speaking of Ohio State, they have also been involved in a trademark dispute with Oklahoma State University over the acronym OSU.  With the limited number of possible letter combinations for these schools, universities commonly create usage agreements between each other so that both can use an acronym, like Oregon State has with Oklahoma State.  Oklahoma State had peacefully existed with Ohio State over this mark as it relates to athletic events.  However, Ohio State recently filed to have the mark OSU appear on apparel, kicking off a dispute about who can own the term ‘OSU’ when it comes to items like t-shirts.

Another acronym mark dispute? Trojans vs. Gamecocks.  Southern California was concerned that people would confuse them with South Carolina over the use of ‘USC’.  Just like with the mark ‘OSU’, the dispute is over usage in (athletic) apparel.  In addition, both schools peacefully co-existed when it came to using the mark for athletic events.  Ultimately, the court ruled in Southern California’s favor.

University of Oregon and Donald Duck

Speaking of litigious companies, here’s an example of two licensing giants joining forces – Disney and the NCAA.  The bridging gap?  Donald Duck, who is the official mascot for the University of Oregon Ducks.  At one time, he was even listed as being on staff with his own profile page.  The origin of this affiliation rests in an informal arrangement to use Donald Duck as the school’s mascot between Oregon’s athletic director and Walt Disney.  After Disney died, his company and the school worked together to create a formal agreement.

Alabama to Pastry Shop: Cease-and-Desist

In a case around sweets, an Alabama pastry shop owner received a cease-and-desist letter from Collegiate Licensing Company (CLC), who provides licensing and enforcement services for the University of Alabama, to stop making baked goods with their logos.  Well, the owner received an outpouring of community support when this was publicized.  As a result, the University of Alabama issued an apology to the owner, and said they wanted to work with her to allow the continued use of their marks on her pastries. This is a good example about how public opinion may trump trademark enforcement strategy.

Texas A&M: The 12th Man in football originated in collegiate athletics

The term 12th man has received attention in the past years from the NFL teams Seattle Seahawks and Indianapolis Colts.  However, this term is protected by a trademark owned by Texas A&M.  As a result, they have made sure to police their mark.  They brought suit against the Colts in 2015.  This is after the Aggies made repeated requests since 2006 for the Colts to stop using their mark.  That same year, the Aggies sued the Seahawks for the same trademark infringement.  The Colts amicably settled with the Aggies the following year.  The Seahawks’ settlement involved paying the Aggies a licensing fee in order to continue using the term, which they renewed in 2016.

Colleges and universities are fiercely protective over their trademarks due to a large amount of competition, and the potential to make millions in licensing deals. The above examples are just the tip of the iceberg when it comes to the lawsuits filed by colleges and universities each year.

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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