Why Did a Cheatham County Middle School Need a New Mascot? A Familiar Trademark Story
This article was written and published for The Tennessee Bar Journal Vo. 61, No. 4
Ashland City’s Cheatham Middle School got a new mascot. Previously known at the “Bearcats,” the Middle Tennessee school changed mascots because of a cease-and-desist letter it received from the University of Cincinnati.
The bearcat was first associated with the University of Cincinnati sports teams in a 1914 campus newspaper.1 Those Cincinnati Bearcat sports teams have a long history of excellence. Sandy Koufax, Oscar Robertson, Kenyon Martin and the Kelce brothers all played at Cincinnati. In 1961 and 1962, Cincinnati was the NCAA basketball tournament champions. In 2009, Cincinnati’s football team made it into the college football playoffs.
But does the University of Cincinnati have the right to stop a Tennessee middle school from using a bearcat as its mascot?
A trademark is primarily a source identifier. The main questions to ask in a trademark dispute are: (1) who used the mark first; (2) do consumers consider the mark as an indicator of source; and (3) would consumers be confused by the accused mark?
The question of confusion is often difficult to resolve in the sports context. The Southeastern Conference (SEC) boasts two teams known as the Bulldogs, three teams known as the Tigers, and two UTs (The University of Tennessee is the senior UT, as the university was founded in 1794, 51 years before Texas joined the United States and 91 years prior to the founding of the University of Texas). In many industries this sort of overlap would be unthinkable, but sports fans have no trouble distinguishing between the Auburn Tigers, the Clemson Tigers, the Detroit Tigers, the Grambling State Tigers, the Jackson State Tigers, the LSU Tigers, the Memphis Tigers, the Missouri Tigers, the Princeton Tigers and the Tennessee State Tigers.
Would a reasonable consumer be confused between Cincinnati’s football team and Cheatham Middle School’s football team? Would reasonable consumers believe the University in Ohio was affiliated with a middle school in Middle Tennessee? That the university sponsored this middle school in another state?
What is the Underlying Law?
A trademark is an identifier — a word, name, symbol, device or other designation — that is distinctive of a single source of goods or services, and which distinguishes the goods and services from competitors.2 Common law trademark protection begins as soon as an identifier capable of trademark protection is used in commerce. However, that common law protection is limited to the geographic area where the trademark is used in commerce.
The federal Lanham Act incorporates the common law of trademark protection, but also gives additional benefits to holders of registered trademarks. The benefits of federal registration include:
- A listing in the United States Patent and Trademark Office’s (USPTO) database of registered and pending trademarks;
- A legal presumption that the registered owner owns the trademark and has the exclusive right to use it;
- The right to bring a lawsuit to enforce the trademark in federal court;
- The right to use the federal trademark registration symbol ®;
- A presumption of validity within the United States; and
- The ability to record the registration with U.S. Customs and Border Protection to stop the importation of infringing goods.3
Five years after registration, a party can file a declaration of incontestability limiting attacks on the validity of the registration.4
Both common law and federal trademark protection give the mark owner the right to exclude others from using a confusingly similar mark to sell similar goods or services. That limited exclusive use right serves trademark law’s purpose of protecting against consumer confusion.
Goods and Services Limitations
One of the primary limitations on trademark rights is that trademarks only apply to the goods and services actually offered and to a brand’s “zone of natural expansion,” i.e., the type of related goods or services that a reasonable consumer would believe came from the same source.5 For instance, a fried chicken restaurant with a valid trademark would be able to exclude others from using its trademark for a competing fried chicken restaurant (goods and services offered) and it would likely be able to exclude others from offering a home cook fry batter for chicken using its trademark (within natural zone of expansion of its offered goods and services). On the other hand, there is no problem with both Yale University and Yale Locks coexisting. No reasonable consumer would be confused that a lock company was offering educational services as a sideline. Likewise, no reasonable consumer would believe that an Ivy League university was selling locks. The same analysis is true for Delta Airlines and Delta Faucets.
However, the line drawing necessary to distinguish simultaneous uses is not always clear. Following Peyton Manning and the Denver Broncos 2016 Super Bowl victory, the Broncos attempted to register ORANGE CRUSH as a trademark for an apparel line.6 Dr. Pepper/Seven Up, the owner of the trademark for the soft drink Orange Crush, filed an opposition to that application.7 After that opposition was filed, the Broncos abandoned their application instead of continuing to seek registration.
In the Sixth Circuit, “[t]he relatedness inquiry … focuses on whether goods or services with comparable marks that are similarly marketed and appeal to common customers are likely to lead consumers to believe that they ‘come from the same source, or are somehow connected with or sponsored by a common company.’”8 Goods or services are not necessarily related … simply because they “coexist in the same broad industry.”9
The Law of Confusion
There is little misunderstanding in the well-settled law of consumer confusion. In bringing a trademark infringement claim, the burden is on the plaintiff to prove a likelihood of consumer confusion.
The Sixth Circuit has identified eight factors that are relevant in determining whether a likelihood of confusion exists: (1) the strength of the plaintiff’s mark, (2) the relatedness of the goods or services offered by the plaintiff and the defendant, (3) the similarity of the marks, (4) any evidence of actual confusion, (5) the marketing channels used by the parties, (6) the probable degree of purchaser care and sophistication, (7) the defendant’s intent in selecting its mark, and (8) the likelihood of either party expanding its product line using the marks.10
Under this test, “‘the ultimate question remains whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way.’”11 Each of these eight factors (which vary slightly from circuit to circuit and which some circuits call the “digits of confusion”) are meant to be a stand-in for the finder of fact to determine what exists in consumers’ minds.
Does the University of Cincinnati Have a 'Bearcats' Trademark?
Cincinnati has trademark rights in “Bearcats;” however, the extent of those rights is subject to serious questions. In 1992, the university registered BEARCATS as a service mark for providing educational services.12 However, that registration was cancelled because the university failed to file an updated declaration of use. The university does have an active BEARCATS registration for “athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms.”13
The university also has a pending application to register BEARCATS for “organizing and conducting college sport competitions and athletic events.”14 The review process of that application is currently suspended because two other entities are seeking to register BEARCATS for education and entertainment services. One of those entities, World Wrestling Entertainment,15 has abandoned its application. The other person seeking registration is an individual who apparently operates an AAU basketball team, Lady Bearcats Elite.16
The University of Cincinnati likely has common law rights to BEARCATS for providing educational services and promoting collegiate athletic events. For educational services, the scope of protection may well be limited to the areas where the University of Cincinnati has campuses. Perhaps the university could argue for broader protection, if it offers distance learning. Is there an argument that the university’s exclusive use rights would extend to the operations of a middle school in Tennessee? It is difficult to see that argument.
For organizing athletic competitions, the university’s service mark is likely limited in a different way. The Cincinnati Bearcats play games across the country and many of its athletic contests are broadcast throughout the United States. However, even in its own application with the USPTO, the university recognized that its rights were limited to organizing these competitions as they related to college athletics.
Reasonable consumers do not have trouble distinguishing between college and professional sports. Likewise, reasonable consumers should not have difficulty distinguishing between college sports and middle school sports. That clarity is consistent with the Sixth Circuit’s position that just because services are in the same broad industry, the services are not necessarily related in consumers minds. Thus, there is a good argument that the educational and athletic services provided by the University of Cincinnati and Cheatham Middle School are not related, as far as trademark law is concerned.
Why Write a Cease-and-Desist Letter?
Trademark law generally requires trademark owners to police their marks for third-party infringement. As one scholar has written: “The most ‘intellectual’ of the intellectual properties, trademarks are property purely of consumers’ minds.”17 That means if a trademark or service mark stops being seen by consumers as a source signifier, it stops having trademark protection. Allowing others to use a confusingly similar mark to sell the same or related goods and services can cause the loss of trademark rights. This loss occurs if the use of confusingly similar marks is widespread enough to mean that consumers no longer associate the mark with one brand, but instead associate the mark with a particular industry. That’s why, for example, Kleenex must insist that competitors sell “tissues” rather than “kleenex,” and Xerox must demand that competitors’ equipment make “copies” rather than “xeroxes.”
That policing requirement puts a burden on trademark owners, like the University of Cincinnati, to take action when others use a conflicting mark. Without effective policing, the university could lose all its rights in the mark. By sending a cease-and-desist letter, the university has created documentary evidence of its attempts to protect the use of its mark and maintain its exclusive rights. That cease-and-desist letter, even if there was no intent to enforce it against Cheatham Middle School, could play a role in a dispute against more obvious infringers where the university would be willing to pursue a litigation.
We have seen enforcement problems play out in the past with college athletics. Oklahoma State University, Wyoming University and New Mexico State University all used “Pistol Pete” as their athletics mascot. When Wyoming attempted to register Pistol Pete as a trademark, that forced Oklahoma State to oppose the registration, as the senior user, and to obtain a registration of its own. Now, the parties have resolved their dispute with Oklahoma State as the owner of the trademark and Wyoming and New Mexico State as licensees with limited rights.
A current such dilemma exists for Boise State. In 2011, Boise State registered “the color blue used on the artificial turf in the stadium” as a service mark for providing “entertainment services, namely, the presentation of intercollegiate sporting events and sports exhibitions … .”18 Since 2011, Boise State has taken the position that it owns the exclusive right to use football fields that are not the traditional color, green.19 Sportico, the leading digital news source for the business of sport, reports that generally colleges deciding to use non-traditionally colored artificial turf have consulted with Boise State before installing new turf. However, in 2023, SUNY Morrisville installed new non-traditional (black) turf without Boise State’s permission. That put Boise State in the position of having to determine whether to bring an action against SUNY Morrisville. That may well have been a difficult decision. Failure to act may result in limiting Boise State’s registration to blue fields, as opposed to all non-traditional fields. However, taking action and losing would be an expensive route to the same outcome. Ultimately, Boise State did not take any public action against SUNY Morrisville, although it is possible the parties reached an agreement outside the courts.
The University of Cincinnati wants to avoid those problems. By aggressively policing its mark, the school hopes to ensure that every use of the word “bearcats” as it relates to sports or academics makes consumers think of the university. The bigger the moat that a company (or university) puts around uses of its mark, the more valuable those trademark rights become. Aggressive enforcement of trademark rights creates a stronger association between the mark and the goods or services being offered under that mark, as less competition means consumers more closely associate a mark with a particular entity.
Why Cease and Desist?
Cost
Litigation is expensive. Trademark litigation can be particularly expensive. Researchers examining trademark cases that went to trial between 2009 and 2014 found that the fees for bringing or defending such actions ranged from $375,000 to $2,000,000 per case.20 Typically, cases that turn on the likelihood of consumer confusion require expert survey testimony. These likelihood of confusion surveys alone generally cost more than $40,000. A likely interrogatory would require the school to identify each and every use it makes of the Bearcat mark. Such a project itself can take dozens of hours and require a significant expenditure.
Risk
The risks of losing a trademark infringement claim can be severe. A successful trademark infringement plaintiff can be entitled to: (1) an injunction requiring the defendant to stop using the accused mark; (2) an order requiring destruction of all infringing articles; (3) money damages, including potentially a disgorgement of any profits made in conjunction with the accused mark;21 and (4) in “extraordinary cases” the plaintiff’s attorney fees.
Sports teams frequently seek orders requiring destruction of infringing articles. In advance of the Super Bowl, the NFL has regularly obtained seizure or destruction orders to stop counterfeiters operating in the host city.22 However, these types of orders are not limited to stopping counterfeiters. If a jury were to find the middle school had infringed the university’s trademark, the middle school could be required to destroy all merchandise bearing the word “bearcats.” That would include shirts and other merchandise used by the school for fundraisers. Such a destruction order could have devastating effects on the extracurricular activities the school offers.
The risk of spending hundreds of thousands of dollars to get a result that requires disgorgement of profits, and the payment of the opposing party’s fees, is simply too much risk for many businesses.
Lack of Benefit
The United States is home to some of the world’s biggest brands, from Apple to Xerox. For brands that have spent millions of dollars and decades promoting their goods or services under a particular trademark, there is no doubt that trademark litigation serves an important business function. However, for many brands, the value of the trademark is not sufficient to justify the cost of litigation.
Cheatham Middle School is unlikely to lose any students over a change in its mascot. The education offered by the school will not change. The reality is that the cost of buying new sports uniforms and changing signs would be much less expensive than defending a lawsuit.
A best practice is to perform a full trademark search in advance of adopting a trademark. Such a search can avoid a forced rebranding and help alleviate litigation risk. Without such a search, companies may find themselves in the same unenviable position as Cheatham Middle School.
Conclusion
Cease-and-desist letters are an inexpensive tool for policing trademarks. Receiving a cease-and-desist trademark infringement letter creates an inflection point for the owner of an accused mark. These types of letters can sometimes be ignored without consequence. However, the receipt of such a letter is regularly a time to determine whether rebranding, obtaining a license, or seeking a declaratory judgment is the best business decision. No matter the facts, an experienced trademark litigator must be able to advise a business regarding the risks and benefits of (1) maintaining the status quo, (2) negotiating a license, (3) seeking a declaratory judgment for non-infringement or (4) re-branding. |||
Editor’s Note: As of Dec. 9, 2024, after a community vote, Cheatham Middle School’s new mascot is the Musketeer.
NOTES
1. Cedric Ricks, “A century-old love affair with the Bearcat: Cincinnati Enquirer explains the origins of UC’s most prominent citizen of goodwill,” Cincinnati Enquirer (May 31, 2024), www.uc.edu/news/articles/2024/05/cincinnati-enquirer-explains-the-origins-of-ucs-bearcat.html.
2. Restatement 3d of Unfair Competition § 9.
3. “Why register your trademark,” United States Patent and Trademark Office, www.uspto.gov/trademarks/basics/why-register-your-trademark.
4. 15 U.S.C. § 1065(3).
5. “Famous” marks are subject to additional protections to prevent dilution of the mark. However, very few trademarks are actually “famous,” as defined by the Lanham Act.
6. U.S. Serial No. 86772944.
7. Dr. Pepper/Seven Up Inc. v. PDB Sports Ltd. d/b/a Denver Broncos Football Club, Opp. No. 91228229 (TTAB 2016).
8. Therma-Scan v. Thermoscan, 295 F.3d 623, 633 (6th Cir. 2002)(quoting Homeowners Group, 931 F.2d at 1109).
9. Id. (quoting Homeowners Group Inc. v. Home Mktg. Specialists Inc., 931 F.2d 1100, 1107 (6th Cir. 1991)).
10. Therma-Scan, 295 F.3d 623 at 630.
11. Id. (quoting Homeowners Group 931 F.2d at 1109).
12. U.S. Reg. No. 74115467.
13. U.S. Reg. No. 6554296.
14. U.S. Serial No. 98066635.
15. Anyone who follows wrestling or trademark disputes knows that World Wrestling Entertainment (WWE) was previously known as the World Wresting Federation (WWF) and renamed as part of the resolution of a trademark dispute with the World Wildlife Fund (WWF).
16. U.S. Serial No. 98043386
17. Barton Beebe, Search and Persuasion in Trademark Law, 103 Mich. L. Rev. 2020, (2005) (citations omitted).
18. U.S. Reg. No. 3707623.
19. Daniel Libit, “Boise State’s Trademark Turf Tested by Suny Morrisville Snub,” Sportico (Sept. 19, 2023), www.sportico.com/leagues/college-sports/2023/suny-morrisville-black-turf-boise-state-trademark-1234738880/.
20. Larisa Ertekin, Alina Sorescu and Mark B. Houston, “Hands Off My Brand! The Financial Consequences of Protecting Brands Through Trademark Infringement Lawsuits,” Journal of Marketing (Sept. 2016) at 82, www.ama.org/2018/09/12/hands-off-my-brand-the-financial-consequences-of-protecting-brands-through-trademark-infringement-lawsuits/.
21. The Supreme Court is currently considering whether corporate affiliate profits can be disgorged as a remedy for trademark infringement. Dewberry Group Inc. v. Dewberry Engineers Inc., Case No. 23-900 (2023), appealing, 775 F.4th 265 (4th Cir. 2023).
22. See e.g., NFL Properties LLC v. Does 1 Through 200, No. 20-cv-20265, 2020 WL 7493120 (S.D. Fla. 2020); NFL Properties LLC v. Does 1 Through 100, No. 16-cv-0474, 2016 WL 9223833 (N.D. Cal. Feb. 2, 2016).
A trademark is primarily a source identifier. The main questions to ask in a trademark dispute are: (1) who used the mark first; (2) do consumers consider the mark as an indicator of source; and (3) would consumers be confused by the accused mark?
The question of confusion is often difficult to resolve in the sports context. The Southeastern Conference (SEC) boasts two teams known as the Bulldogs, three teams known as the Tigers, and two UTs (The University of Tennessee is the senior UT, as the university was founded in 1794, 51 years before Texas joined the United States and 91 years prior to the founding of the University of Texas). In many industries this sort of overlap would be unthinkable, but sports fans have no trouble distinguishing between the Auburn Tigers, the Clemson Tigers, the Detroit Tigers, the Grambling State Tigers, the Jackson State Tigers, the LSU Tigers, the Memphis Tigers, the Missouri Tigers, the Princeton Tigers and the Tennessee State Tigers.
Would a reasonable consumer be confused between Cincinnati’s football team and Cheatham Middle School’s football team? Would reasonable consumers believe the University in Ohio was affiliated with a middle school in Middle Tennessee? That the university sponsored this middle school in another state?
What is the Underlying Law?
A trademark is an identifier — a word, name, symbol, device or other designation — that is distinctive of a single source of goods or services, and which distinguishes the goods and services from competitors.2 Common law trademark protection begins as soon as an identifier capable of trademark protection is used in commerce. However, that common law protection is limited to the geographic area where the trademark is used in commerce.
The federal Lanham Act incorporates the common law of trademark protection, but also gives additional benefits to holders of registered trademarks. The benefits of federal registration include:
- A listing in the United States Patent and Trademark Office’s (USPTO) database of registered and pending trademarks;
- A legal presumption that the registered owner owns the trademark and has the exclusive right to use it;
- The right to bring a lawsuit to enforce the trademark in federal court;
- The right to use the federal trademark registration symbol ®;
- A presumption of validity within the United States; and
- The ability to record the registration with U.S. Customs and Border Protection to stop the importation of infringing goods.3
Five years after registration, a party can file a declaration of incontestability limiting attacks on the validity of the registration.4
Both common law and federal trademark protection give the mark owner the right to exclude others from using a confusingly similar mark to sell similar goods or services. That limited exclusive use right serves trademark law’s purpose of protecting against consumer confusion.
Goods and Services Limitations
One of the primary limitations on trademark rights is that trademarks only apply to the goods and services actually offered and to a brand’s “zone of natural expansion,” i.e., the type of related goods or services that a reasonable consumer would believe came from the same source.5 For instance, a fried chicken restaurant with a valid trademark would be able to exclude others from using its trademark for a competing fried chicken restaurant (goods and services offered) and it would likely be able to exclude others from offering a home cook fry batter for chicken using its trademark (within natural zone of expansion of its offered goods and services). On the other hand, there is no problem with both Yale University and Yale Locks coexisting. No reasonable consumer would be confused that a lock company was offering educational services as a sideline. Likewise, no reasonable consumer would believe that an Ivy League university was selling locks. The same analysis is true for Delta Airlines and Delta Faucets.
However, the line drawing necessary to distinguish simultaneous uses is not always clear. Following Peyton Manning and the Denver Broncos 2016 Super Bowl victory, the Broncos attempted to register ORANGE CRUSH as a trademark for an apparel line.6 Dr. Pepper/Seven Up, the owner of the trademark for the soft drink Orange Crush, filed an opposition to that application.7 After that opposition was filed, the Broncos abandoned their application instead of continuing to seek registration.
In the Sixth Circuit, “[t]he relatedness inquiry … focuses on whether goods or services with comparable marks that are similarly marketed and appeal to common customers are likely to lead consumers to believe that they ‘come from the same source, or are somehow connected with or sponsored by a common company.’”8 Goods or services are not necessarily related … simply because they “coexist in the same broad industry.”9
The Law of Confusion
There is little misunderstanding in the well-settled law of consumer confusion. In bringing a trademark infringement claim, the burden is on the plaintiff to prove a likelihood of consumer confusion.
The Sixth Circuit has identified eight factors that are relevant in determining whether a likelihood of confusion exists: (1) the strength of the plaintiff’s mark, (2) the relatedness of the goods or services offered by the plaintiff and the defendant, (3) the similarity of the marks, (4) any evidence of actual confusion, (5) the marketing channels used by the parties, (6) the probable degree of purchaser care and sophistication, (7) the defendant’s intent in selecting its mark, and (8) the likelihood of either party expanding its product line using the marks.10
Under this test, “‘the ultimate question remains whether relevant consumers are likely to believe that the products or services offered by the parties are affiliated in some way.’”11 Each of these eight factors (which vary slightly from circuit to circuit and which some circuits call the “digits of confusion”) are meant to be a stand-in for the finder of fact to determine what exists in consumers’ minds.
Does the University of Cincinnati Have a 'Bearcats' Trademark?
Cincinnati has trademark rights in “Bearcats;” however, the extent of those rights is subject to serious questions. In 1992, the university registered BEARCATS as a service mark for providing educational services.12 However, that registration was cancelled because the university failed to file an updated declaration of use. The university does have an active BEARCATS registration for “athletic apparel, namely, shirts, pants, jackets, footwear, hats and caps, athletic uniforms.”13
The university also has a pending application to register BEARCATS for “organizing and conducting college sport competitions and athletic events.”14 The review process of that application is currently suspended because two other entities are seeking to register BEARCATS for education and entertainment services. One of those entities, World Wrestling Entertainment,15 has abandoned its application. The other person seeking registration is an individual who apparently operates an AAU basketball team, Lady Bearcats Elite.16
The University of Cincinnati likely has common law rights to BEARCATS for providing educational services and promoting collegiate athletic events. For educational services, the scope of protection may well be limited to the areas where the University of Cincinnati has campuses. Perhaps the university could argue for broader protection, if it offers distance learning. Is there an argument that the university’s exclusive use rights would extend to the operations of a middle school in Tennessee? It is difficult to see that argument.
For organizing athletic competitions, the university’s service mark is likely limited in a different way. The Cincinnati Bearcats play games across the country and many of its athletic contests are broadcast throughout the United States. However, even in its own application with the USPTO, the university recognized that its rights were limited to organizing these competitions as they related to college athletics.
Reasonable consumers do not have trouble distinguishing between college and professional sports. Likewise, reasonable consumers should not have difficulty distinguishing between college sports and middle school sports. That clarity is consistent with the Sixth Circuit’s position that just because services are in the same broad industry, the services are not necessarily related in consumers minds. Thus, there is a good argument that the educational and athletic services provided by the University of Cincinnati and Cheatham Middle School are not related, as far as trademark law is concerned.
Why Write a Cease-and-Desist Letter?
Trademark law generally requires trademark owners to police their marks for third-party infringement. As one scholar has written: “The most ‘intellectual’ of the intellectual properties, trademarks are property purely of consumers’ minds.”17 That means if a trademark or service mark stops being seen by consumers as a source signifier, it stops having trademark protection. Allowing others to use a confusingly similar mark to sell the same or related goods and services can cause the loss of trademark rights. This loss occurs if the use of confusingly similar marks is widespread enough to mean that consumers no longer associate the mark with one brand, but instead associate the mark with a particular industry. That’s why, for example, Kleenex must insist that competitors sell “tissues” rather than “kleenex,” and Xerox must demand that competitors’ equipment make “copies” rather than “xeroxes.”
That policing requirement puts a burden on trademark owners, like the University of Cincinnati, to take action when others use a conflicting mark. Without effective policing, the university could lose all its rights in the mark. By sending a cease-and-desist letter, the university has created documentary evidence of its attempts to protect the use of its mark and maintain its exclusive rights. That cease-and-desist letter, even if there was no intent to enforce it against Cheatham Middle School, could play a role in a dispute against more obvious infringers where the university would be willing to pursue a litigation.
We have seen enforcement problems play out in the past with college athletics. Oklahoma State University, Wyoming University and New Mexico State University all used “Pistol Pete” as their athletics mascot. When Wyoming attempted to register Pistol Pete as a trademark, that forced Oklahoma State to oppose the registration, as the senior user, and to obtain a registration of its own. Now, the parties have resolved their dispute with Oklahoma State as the owner of the trademark and Wyoming and New Mexico State as licensees with limited rights.
A current such dilemma exists for Boise State. In 2011, Boise State registered “the color blue used on the artificial turf in the stadium” as a service mark for providing “entertainment services, namely, the presentation of intercollegiate sporting events and sports exhibitions … .”18 Since 2011, Boise State has taken the position that it owns the exclusive right to use football fields that are not the traditional color, green.19 Sportico, the leading digital news source for the business of sport, reports that generally colleges deciding to use non-traditionally colored artificial turf have consulted with Boise State before installing new turf. However, in 2023, SUNY Morrisville installed new non-traditional (black) turf without Boise State’s permission. That put Boise State in the position of having to determine whether to bring an action against SUNY Morrisville. That may well have been a difficult decision. Failure to act may result in limiting Boise State’s registration to blue fields, as opposed to all non-traditional fields. However, taking action and losing would be an expensive route to the same outcome. Ultimately, Boise State did not take any public action against SUNY Morrisville, although it is possible the parties reached an agreement outside the courts.
The University of Cincinnati wants to avoid those problems. By aggressively policing its mark, the school hopes to ensure that every use of the word “bearcats” as it relates to sports or academics makes consumers think of the university. The bigger the moat that a company (or university) puts around uses of its mark, the more valuable those trademark rights become. Aggressive enforcement of trademark rights creates a stronger association between the mark and the goods or services being offered under that mark, as less competition means consumers more closely associate a mark with a particular entity.
Why Cease and Desist?
Cost
Litigation is expensive. Trademark litigation can be particularly expensive. Researchers examining trademark cases that went to trial between 2009 and 2014 found that the fees for bringing or defending such actions ranged from $375,000 to $2,000,000 per case.20 Typically, cases that turn on the likelihood of consumer confusion require expert survey testimony. These likelihood of confusion surveys alone generally cost more than $40,000. A likely interrogatory would require the school to identify each and every use it makes of the Bearcat mark. Such a project itself can take dozens of hours and require a significant expenditure.
Risk
The risks of losing a trademark infringement claim can be severe. A successful trademark infringement plaintiff can be entitled to: (1) an injunction requiring the defendant to stop using the accused mark; (2) an order requiring destruction of all infringing articles; (3) money damages, including potentially a disgorgement of any profits made in conjunction with the accused mark;21 and (4) in “extraordinary cases” the plaintiff’s attorney fees.
Sports teams frequently seek orders requiring destruction of infringing articles. In advance of the Super Bowl, the NFL has regularly obtained seizure or destruction orders to stop counterfeiters operating in the host city.22 However, these types of orders are not limited to stopping counterfeiters. If a jury were to find the middle school had infringed the university’s trademark, the middle school could be required to destroy all merchandise bearing the word “bearcats.” That would include shirts and other merchandise used by the school for fundraisers. Such a destruction order could have devastating effects on the extracurricular activities the school offers.
The risk of spending hundreds of thousands of dollars to get a result that requires disgorgement of profits, and the payment of the opposing party’s fees, is simply too much risk for many businesses.
Lack of Benefit
The United States is home to some of the world’s biggest brands, from Apple to Xerox. For brands that have spent millions of dollars and decades promoting their goods or services under a particular trademark, there is no doubt that trademark litigation serves an important business function. However, for many brands, the value of the trademark is not sufficient to justify the cost of litigation.
Cheatham Middle School is unlikely to lose any students over a change in its mascot. The education offered by the school will not change. The reality is that the cost of buying new sports uniforms and changing signs would be much less expensive than defending a lawsuit.
A best practice is to perform a full trademark search in advance of adopting a trademark. Such a search can avoid a forced rebranding and help alleviate litigation risk. Without such a search, companies may find themselves in the same unenviable position as Cheatham Middle School.
Conclusion
Cease-and-desist letters are an inexpensive tool for policing trademarks. Receiving a cease-and-desist trademark infringement letter creates an inflection point for the owner of an accused mark. These types of letters can sometimes be ignored without consequence. However, the receipt of such a letter is regularly a time to determine whether rebranding, obtaining a license, or seeking a declaratory judgment is the best business decision. No matter the facts, an experienced trademark litigator must be able to advise a business regarding the risks and benefits of (1) maintaining the status quo, (2) negotiating a license, (3) seeking a declaratory judgment for non-infringement or (4) re-branding. |||
Editor’s Note: As of Dec. 9, 2024, after a community vote, Cheatham Middle School’s new mascot is the Musketeer.
NOTES
1. Cedric Ricks, “A century-old love affair with the Bearcat: Cincinnati Enquirer explains the origins of UC’s most prominent citizen of goodwill,” Cincinnati Enquirer (May 31, 2024), www.uc.edu/news/articles/2024/05/cincinnati-enquirer-explains-the-origins-of-ucs-bearcat.html.
2. Restatement 3d of Unfair Competition § 9.
3. “Why register your trademark,” United States Patent and Trademark Office, www.uspto.gov/trademarks/basics/why-register-your-trademark.
4. 15 U.S.C. § 1065(3).
5. “Famous” marks are subject to additional protections to prevent dilution of the mark. However, very few trademarks are actually “famous,” as defined by the Lanham Act.
6. U.S. Serial No. 86772944.
7. Dr. Pepper/Seven Up Inc. v. PDB Sports Ltd. d/b/a Denver Broncos Football Club, Opp. No. 91228229 (TTAB 2016).
8. Therma-Scan v. Thermoscan, 295 F.3d 623, 633 (6th Cir. 2002)(quoting Homeowners Group, 931 F.2d at 1109).
9. Id. (quoting Homeowners Group Inc. v. Home Mktg. Specialists Inc., 931 F.2d 1100, 1107 (6th Cir. 1991)).
10. Therma-Scan, 295 F.3d 623 at 630.
11. Id. (quoting Homeowners Group 931 F.2d at 1109).
12. U.S. Reg. No. 74115467.
13. U.S. Reg. No. 6554296.
14. U.S. Serial No. 98066635.
15. Anyone who follows wrestling or trademark disputes knows that World Wrestling Entertainment (WWE) was previously known as the World Wresting Federation (WWF) and renamed as part of the resolution of a trademark dispute with the World Wildlife Fund (WWF).
16. U.S. Serial No. 98043386
17. Barton Beebe, Search and Persuasion in Trademark Law, 103 Mich. L. Rev. 2020, (2005) (citations omitted).
18. U.S. Reg. No. 3707623.
19. Daniel Libit, “Boise State’s Trademark Turf Tested by Suny Morrisville Snub,” Sportico (Sept. 19, 2023), www.sportico.com/leagues/college-sports/2023/suny-morrisville-black-turf-boise-state-trademark-1234738880/.
20. Larisa Ertekin, Alina Sorescu and Mark B. Houston, “Hands Off My Brand! The Financial Consequences of Protecting Brands Through Trademark Infringement Lawsuits,” Journal of Marketing (Sept. 2016) at 82, www.ama.org/2018/09/12/hands-off-my-brand-the-financial-consequences-of-protecting-brands-through-trademark-infringement-lawsuits/.
21. The Supreme Court is currently considering whether corporate affiliate profits can be disgorged as a remedy for trademark infringement. Dewberry Group Inc. v. Dewberry Engineers Inc., Case No. 23-900 (2023), appealing, 775 F.4th 265 (4th Cir. 2023).
22. See e.g., NFL Properties LLC v. Does 1 Through 200, No. 20-cv-20265, 2020 WL 7493120 (S.D. Fla. 2020); NFL Properties LLC v. Does 1 Through 100, No. 16-cv-0474, 2016 WL 9223833 (N.D. Cal. Feb. 2, 2016).
