If you recall last year’s March Madness tournament, the Loyola University of Chicago made it to the semifinals and the team chaplain, Sister Jean, received a lot of press. Sister Jean was shown on national television often during the tournament. So, in advance of the tournament this year, Loyola University has moved to protect the name “Sister Jean” with a trademark filing that states they are currently offering Sister Jean branded shirts and socks.
With that said, when I took a look into this application, I found two critical errors that were made by the University which will likely lead to an initial refusal of the trademark application:
- First, nowhere in this application does Sister Jean provide her consent to the registration. There is a rule that if you are going to register the name of a living individual, that person must provide their written consent. This is a fixable error, but it is certainly something the government is going to bring up.
- The second problem is the larger potential issue. The Loyola University provided a photograph of a shirt that reads “Sister Jean believes in you” across the front of the shirt. Unfortunately, putting a saying on the chest of a t-shirt is not considered a “trademark use”. In order to qualify for trademark registration, the trademark must appear on labels or tags for the clothing. This is a very basic rule.
Ultimately, the USPTO should issue an initial refusal of this application because of the two reasons above. While the University can likely correct the first issue, the specimen issue is more complicated. It is only fixable if the University could provide a specimen that they were using prior to the filing of the application. Otherwise, the University would have to amend its application to an “intent to use” filing, start using the trademark correctly, then, later in the process, file a Statement of Use.