Commercial Use of University Name and Logo – Trade Mark Violation?

The West Virginia University has sued an apparel manufacturer based at Morgantown for infringing  the University’s trademarks. Apparently the Universities trademarks were used without authorization and were incorporated on t-shirts. The University has initiated legal proceedings against the retailer for trademark infringement, unfair competition and trademark dilution.
The University has alleged that the retailer has incorporated its logo and popular captions. The University’s Board of Directors stated that retailer has made a “transparent and blatant effort to trade on the identity of the university."  The retailer has also registered an internet domain name using the university’s trademark. 

This is not the first time where the universities/ schools are suing retailers for manufacturing apparels using their marks. In 2008, Louisiana State University, the University of Oklahoma, Ohio State University, the University of Southern California , and Collegiate Licensing Company sued Smack Apparel Company  for infringing their trademarks by selling t-shirts with the school's color schemes. The US court of Appeal held that Smack copied the mark with “an intent to rely upon the drawing power in enticing fans of the particular universities to purchase their shirts. Such an attempt to capitalize on consumer confusion is not a nominative fair use”
The defendants have not filed a response yet. Since the marks are deceptively similar and causes confusion in the minds of the public, its likely that the court might rule in favour of the University. Furthermore, the fact that the defendants have unjustly enriched from the goodwill of the plaintiff’s mark makes the case more favourable to the University.
It would be interesting to know the position in India. Are the universities in India keen on protecting their trademarks? Have we ever wondered whether the t-shirts, sports wear etc bearing a well known university’s name or logo that are easily available on the market are actually licensed by the University or not? You will be surprised to know that some of the renowned universities in India like IIT Bombay, IIT Kanpur, NLSIU Bangalore, NLU Jodhpur, and Banaras Hindu University have not registered their trademarks. If a retailer incorporates the logo of well known universities or modifies the logo, in a manner which is not desirable, it will definitely put a scar on the reputation and good will of the University. On the other hand, if the trademarks are registered, the Universities will be  able to sue for infringement and generate valuable income through merchandising or licensing agreement. A licensing agreement permits the manufacturer to manufacture apparels incorporating the logo or captions for a valuable consideration. It is a win- win situation, wherein both the manufacturer as well as the universities reap benefits, thereby avoiding unnecessary litigation. It would be worth mentioning that many of the foreign universities like Harvard University, Ohio State University, Indiana University and so on, conduct In- house licensing agreement. Duke University, Boston College, Auburn University etc have employed licensing firms to license their trademarks.
An interesting article on trademark licensing by universities may be accessed from here.

Author: Aruna Mukundd

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