Trademark Licensing - Using Trademarks

U.S. Patents & Trademarks Office

As defined by the US Patents & Trademarks Office, "a trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others." A trademark need not be registered in order to protect the rights to it, simply by using or displaying a mark acquires automatic trademark rights to the owner.

Collegiate Licensing Corporation

In order to use the University's marks, a vendor must enter into a licensing agreement with Howard. A license is a written legal agreement between the owner of the trademark (licensor) and a manufacturer/vendor (licensee). This license must be in place before use of the marks.

Royalties generated through the sales of collegiate merchandise go back to the colleges and universities for scholarship and university development opportunities. Therefore, it is important to stop the sale of unlicensed merchandise to protect the collegiate institutions involved and the integrity of the trademarks that has been established over time.  If you think that you have come across a product in the marketplace that you believe is not licensed or any other infringing use of a college trademark or logo by any individual, company, or organization, please click here to anonymously report it to CLC.

Trademark infringement claims generally are based on one of three legal theories. The first is a “likelihood of confusion” concept – the idea that the infringer, through the use of the senior holder’s marks, creates among consumers confusion over the origin of the goods or services in question. For a university to be successful in establishing such liability against a high school, it must prove that there is a significant likelihood of confusion between its marks and those used by the school being challenged. Applying the criteria used by courts in analyzing such claims (too lengthy of an evaluation to be included herein), it appears unlikely that colleges would prevail against high schools in most such lawsuits.
In fact, despite numerous successful suits against small businesses or individuals selling counterfeit, pirated merchandise bearing university marks, no college has ever attempted to litigate a likelihood-of-confusion trademark case against a school district. Most high schools simply acquiesce to the demands of universities set forth in cease-and-desist letters because of the unequal bargaining power inherent in the risk-reward downside of potentially high-cost litigation.
A second trademark infringement legal theory is a “dilution” concept – the idea that if the senior mark holder fails over time to take action to protect its intellectual property, the marks might become so commonplace as to be considered generic and therefore no longer protectable. Dilution is also premised on the idea that if widespread infringement of famous marks occurs, then the brand value of the famous marks will be diminished in value. Applying the criteria used by courts to evaluate dilution, it appears more likely that a university might succeed against a high school with a dilution argument than with a likelihood-of-confusion claim, although once again, no college has ever attempted to litigate a trademark dilution case against a school.
The third common trademark infringement legal theory is a “tarnishment” concept – the idea that the use of marks by an alleged infringer on inappropriate products or the involvement of the alleged infringer in a scandal of some sort might damage the value of the marks to the senior holder. For instance, if a high school athletics program using the nickname, logo and mascot of a university were to be involved in an incident of hazing, sexual harassment or other misconduct resulting in extensive media coverage, the university might be damaged by association. Again, however, no college has ever attempted to litigate a trademark tarnishment case against a school.
Finally, allegations of trademark infringement often include the related claim of copyright infringement for unlicensed reproduction of the artwork for the design of a logo or mascot. Proof of copyright infringement requires only a showing of access by the infringer to the original, copyrighted work and substantial similarity of the reproduction to the original. Again, however, despite numerous successful copyright suits against small businesses or individuals selling counterfeit, pirated merchandise bearing university-owned artwork, no college has ever attempted to litigate a copyright infringement lawsuit related to logos or mascots against a school districLet.

Trademark & Copyright Law

Trademark infringement claims generally are based on one of three legal theories:

  1. “Likelihood of Confusion” – the idea that the infringer, through the use of the holder’s marks, creates among consumers confusion over the origin of the goods or services in question.
  2. “Dilution” – the idea that if the mark holder fails over time to take action to protect its intellectual property, the marks might become so commonplace as to be considered generic and therefore no longer protectable.  Dilution is also premised on the idea that if widespread infringement of famous marks occurs, then the brand value of the famous marks will be diminished in value.
  3. “Tarnishment” – the idea that the use of marks by an alleged infringer on inappropriate products or the involvement of the alleged infringer in a scandal of some sort might damage the value of the marks to the holder.

Allegations of trademark infringement often include the related claim of copyright infringement for unlicensed reproduction of the artwork for the design of a logo or mascot.  Proof of copyright infringement requires only a showing of access by the infringer to the original, copyrighted work and substantial similarity of the reproduction to the original.