Iowa Defeats USM, 2-1, in PTO Decision

A trademark issue turns schools into arch enemies.

There are two things getting me through this record-breaking heat wave: 1. industrial-strength air conditioning; and 2. anticipating the return of college football season. The crispness that suddenly returns to the air when contemplating the epic rivalries of college football is enough to chill even the stuffiest of triple-digit breezes. However, when you think of athletic arch-enemies, the University of Southern Mississippi and the University of Iowa certainly are not at the top of most lists.

Indeed, it is a trademark issue that has brought these two schools against each other rather than any sort of NCAA-sponsored athletic event. In 2003, USM unveiled its new Golden Eagle logo in an effort to “overhaul of the athletic department’s brand.” The logo quickly became a big part of the school’s athletic identity. In 2004, the University of Iowa formally contested the trademark registration of USM’s new logo on the grounds that it was confusingly similar to its “tiger hawk” emblem.

As a result, USM's trademark application was denied by administrative judges at the United States Patent and Trademark Office, who ruled 2-1 in favor of Iowa. Administrative trademark judge David Bucher wrote in his majority opinion that he backed Iowa's claim that there would be "the likelihood of confusion" in merchandise sales between the schools, rejecting USM's detailed argument on differences between the two logos. “The overall similarity in appearance of the marks on the goods, particularly in light of the use of identical color schemes, creates virtually identical commercial impressions," Bucher wrote. USM argued that the “use of birds of prey as mascots is prevalent in college sports along with the use of bird heads as logos,” but this argument was flatly rejected.

While USM officials are dissecting the 54-page decision, they should keep in mind that there are several legal alternatives on both sides of the dispute. On the one hand, USM officials can appeal the decision to the U.S. Court of Appeals for the Federal Circuit in Washington, D.C. On the other hand, Iowa officials could file a trademark infringement suit against USM. This hypothetical lawsuit could require USM to cease using the Golden Eagle logo and demand damages which, under the Lanham Act, could include disgorgement of profits that USM has made from the use of its Golden Eagle logo on clothing and other merchandise.

A third option would be for the universities to enter into a trademark coexistence agreement. Trademark coexistence is a scenario in which two different enterprises use a similar trademark without necessarily interfering with each other’s businesses. This is not uncommon. The “UT” mark, for example, has a substantially different meaning depending on whether you are in Texas or Tennessee. Outside of college athletics, trademarks are often used by small businesses within a limited geographical area or with a regional customer base. Usually trademarks consist of the family name of the person who started a business and, where that name is a common one, it is not unusual to find similar businesses under the same or similar names. None of this has to lead to conflict or litigation as long as the coexisting trademarks continue to perform their main function, namely to distinguish the goods or services for which they are used from those of competitors. USM and Iowa are approximately 825 miles apart. USM competes in the Conference USA athletic conference while Iowa is a member of the Big Ten. The Golden Eagle logo and the Tiger Hawk emblem are very similar, but not identical. The facts seem ripe for a trademark coexistence agreement.

The problems with trademark coexistence arise when this distinguishing function no longer works
because the businesses start to overlap. This is especially frustrating where both businesses use their identical trademarks in good faith, but start to trespass on each other’s territories due to otherwise innocent business expansion. Although USM and Iowa do not currently compete against each other in regular-season college athletics events, who is to say that they will not in the future?

Kristen Knauf is a trial attorney who handles all types of complex litigation matters, with a special emphasis on commercial litigation, intellectual property, and unfair competition. She has published articles on the Lanham Act and on unconscionable clauses in sports venue leases. She is licensed to practice in Wisconsin and Texas.

Copyright McDole & Williams, P.C.
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Disclaimer: While every effort has been made to ensure the accuracy of this publication, it is not intended to provide legal advice as individual situations will differ and should be discussed with an expert and/or lawyer. For specific technical or legal advice on the information provided and related topics, please contact the author.

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