Trademarkology: The Law of the Brand

Trademarkology: The Law of the Brand

Prescriptions for Pharmaceutical Marks

Posted in Trademarks

Some types of applications have a more difficult time than others proceeding to registration before the United States Patent and Trademark Office (the “PTO”). Sometimes the nature of a mark (such as product packaging) requires more evidence to demonstrate eligibility for registration. But sometimes the industry or goods with which the mark is used present a special challenge for the application. For example, marks chosen for use with heavily-regulated goods or services like pharmaceutical products may face unique challenges that require extra planning and strategy. Here we will talk about just one factor that makes the road to trademark registration more difficult for pharmaceutical products than for more other products: time.

Pharmaceutical products undergo review by the Food and Drug Administration (the “FDA”). This review can take a very long time, much longer than takes to examine a trademark application. What is a trademark applicant to do if the PTO completes its examination of the application and/or requires proof of use of the mark in commerce before the FDA completes its review of the product? There are some things the trademark applicant can do to buy itself more time in the trademark application process.

At the outset, the trademark applicant could consider filing an application in a jurisdiction outside the U.S. that is party to the Paris Convention or a similar treaty. This way, the applicant can delay filing the application in the US for up to six months and still rely on the foreign application’s filing date for priority in the U.S. This can potentially extend the period of time between the applicant’s selection of a mark and the date it will have to prove use by up to six months.

When filing the application with the PTO, the applicant will usually file on an intent-to-use basis since it has not already used the mark in commerce. (And if it is able to file the application to register the mark on the basis of foreign registration, it should consider adding that basis as well.) Once the application has been filed with the PTO, it will usually take approximately three months for the application to be assigned to an examining attorney for review. If the examining attorney raises any substantive issues or formalities, the applicant will have up to six months to respond to the office action. Once the applicant satisfactorily addresses any substantive concerns or formalities raised by the examining attorney, the application will be published. If no third party opposes registration of the mark after publication, the PTO will issue a notice of allowance giving the applicant six months to prove use of its mark in commerce.

At this point, the applicant may be in a position to prove use even if the FDA has not approved the product for the marketplace if the applicant has already begun clinical trials (depending on whether and how the mark is used in such clinical trials). But if the applicant’s product has not reached the clinical trial stage, or if the applicant cannot satisfy the criteria to prove use, the applicant may seek a six-month extension of time. The applicant may seek up to five such extensions if necessary.

If the applicant was able to file its application on both an intent-to-use basis and foreign registration basis, the applicant may have some advantages. If the application includes a foreign registration basis, and the applicant has exhausted the available extensions of time to prove use, the applicant may choose to drop the intent-to-use basis upon expiration of the last extension period. This would allow the application to proceed to registration without first having to prove use. If the application is not eligible for registration in the US on the basis of a foreign registration, then it will need to start the application process over again (and should think about the potential for this eventuality well before the application reaches this stage to decide whether to take alternative precautionary measures, including filing a new application).

If the mark proceeds to registration on the foreign registration basis, the registrant will have to prove use of the mark in commerce between the fifth and sixth anniversaries of the registration date. It is possible that third parties could challenge the registration on abandonment grounds before that deadline if the mark has not been used since registration (and such challenges would benefit from a presumption of abandonment if the mark has not been used for three or more years following registration). But if the registrant can demonstrate that its product is still progressing in the FDA review process, that it has documented plans for using the mark, and that but for the absence of FDA approval the mark would be in use, it may be able to defend against an allegation of abandonment successfully.

In short, while the length of time it takes to obtain FDA approval may pose an extra burden on applicants seeking to register marks for use with pharmaceutical products, applicants can implement strategies to overcome this obstacle, including (1) filing applications abroad first and taking advantage of the 6-month period during which the applicant may file in the US and claim priority back to the filing date of the foreign application, (2) filing on an intent-to-use basis (as well as foreign registration basis, if that is available), (3) maximizing the number of extensions available to prove use, and (5) dropping the intent-to-use basis to obtain registration based on the foreign registration alone (if that is available to applicant). Throughout the trademark application process, the applicant should regularly consult with the trademark attorney to keep her apprised of the status of the FDA’s review of the product. Together, the applicant and attorney can periodically assess whether FDA approval is likely to take so long that it is worth starting over with a new application.

Going Bananas for Halloween – Costume Wars

Posted in Trademarks

Are you a Halloweenie? If you are, you value all things Halloween on this spooky day filled with tricks, treats, and… you guessed it – costumes. The National Retail Federation estimates that Americans will spend over $9 billion this year, with about $3.4 billion attributable to costumes. Costumes are big business.

The banana costume is at the center of a short-lived lawsuit filed in New Jersey federal court by Silvertop Associates DBA Rasta Imposta, against Kmart and its parent company Sears. The case is Silvertop Associates Inc d/b/a Rasta Imposta v Kmart Corp et al, U.S. District Court for the District of New Jersey, Case No. 17-07499. It was filed on September 27 but then voluntarily dismissed by Rasta Imposta just a few weeks later. The judge entered the dismissal order on October 17, 2017, after the parties settled. While we won’t get to battle for top banana, the allegations are interesting.

Rasta Imposta’s complaint alleges that its banana costume is “one of the company’s most important costumes” sold through several retailers. Kmart had purchased Rasta Imposta’s banana costumes for several years, but the relationship spoiled, leading Kmart to pick its bananas from a different tree. For the 2017 Halloween season, Kmart sourced its banana costume from a different supplier, which drove Rasta Imposta bananas.

The complaint alleges that the Kmart banana costume is a knockoff design and constitutes copyright infringement, unfair competition, and trade dress infringement. Copyrights are a sister form of protection to trademarks and protect the content of a work of authorship like books, software, and artistic designs and sculptures. Trademarks, on the other hand, are source identifiers. “Trade Dress” is a form of trademark protection that seeks to protect the look of the product itself or the packaging of the product rather than what the brand name by which the product is called. For example, Coca-Cola claims trade dress protection for the iconic design of its glass Coke bottle. The images below demonstrate the Coke® bottle design shown in line drawing form that appears on the trademark registration certificate (left) opposite an image of the finished product (right):

The dueling banana costumes of both parties as shown in the Complaint look like this:

Amid publicity over the lawsuit and peak costume-buying season, the lawsuit settled. The details of settlement have not been released, but CNBC reports that Rasta Imposta is going to continuing selling to Kmart in the future.

Rasta Imposta owns a federal copyright registration for its banana costume. The copyright would not prevent others from making their own banana costume because copyrights only protect a particular expression of an idea rather than the idea itself. Its claim of trade dress rights, however, is not supported by a registration. If Rasta Imposta can prove it owns trade dress rights to the banana design, it would be protected from similar designs that are likely to cause consumer confusion. But, this banana battle settled early, so we won’t get to see whether Rasta Imposta can peel away competitive banana designs.

It is worth noting that when considering how to best protect your company assets, you should consider both copyright and trademarks. The two together may be used as a 1-2 punch combination if you have to enforce. Logos and other artistic drawings may qualify for copyright protection in addition to trademark protection, so think about both paths.

Phantasmarkgoria

Posted in Trademarks

In the spirit of Halloween, this post will be about the ghostly subject of phantom marks.

Generally, a trademark application filed in the United States may seek registration of only one mark. This is not always the case in other countries. For example, in the United Kingdom, Australia, and Hong Kong, it is possible for a single trademark application to cover a series of marks if they are sufficiently similar and meet certain criteria.

In the United States, federal trademark applications may cover only a single mark for policy reasons. First, the application must provide sufficient constructive notice to third parties about the nature of the mark. Second, the application must turn up in response to a thorough and effective search.

When an application is filed seeking to register a mark with a component that is subject to change the United States Patent and Trademark Office (the “PTO”) must decide whether the variable element covers so many different combinations that the policies mentioned above would be undermined. If so, the PTO will refuse to register it as a phantom mark.

However, the PTO may register marks that have variable or changeable elements so long as the changeable element can only yield a limited in the number of possible variations of the mark, the drawing provides adequate notice to third parties, and the drawing permits adequate searching. For example, noting that an element of the mark must be a contrasting color, an area code, or a year might be sufficiently limited to allow someone conducting a search to encounter the application and analyze the drawing.

Eerily, I mean, earlier this year, the PTO refused registration of two applications seeking registration of phantom marks. In re Construction Research & Technology GmbH, 122 USPQ2d 1583 (TTAB May 17, 2017)(precedential). One sought registration of the mark NP— and the other sought registration of the mark SL—, both for sealant compounds for joints. The applications noted that the dashes in the drawings were intended to represent one or more different alphanumeric characters or other symbols. Below are specimens filed with the applications that allow one to see how the marks are used in commerce:

 

 

 

 

 

As filed, the applications could cover over one thousand marks. Moreover, it was not clear not clear what significance the numbers would have. This is gave the public inadequate notice of the extent of protection afforded the marks and would not permit adequate searching. Accordingly, the PTO refused registration for both applications.

Don’t let the specter of phantom marks spook you this Halloween season. Rather, work with your trademark attorney to determine whether you can file an application to seek registration of a single mark with limited variable elements, or will need to file a separate application for each variation.

 

Nike Plays Defense Against Gronkowski

Posted in Trademarks

In April 2016, Gronk Nation LLC filed two applications for registration of himself in silhouette form spiking a football. Gronk’s “trademark move” is the Gronk spike, so it is no wonder that the logo he is seeking to protect looks like this:

One of the applications was for use in connection with clothing and the other application for use in connection with exercise equipment. Even though Gronk sports a Nike jersey every Sunday and is one of the brand’s endorsers, Nike took issue with the application. Nike filed a Notice of Opposition with the Trademark Trial & Appeal Board, arguing that the Gronk logo is likely to create consumer confusion with the Air Jordan logo, as well as cause dilution of the arguably famous mark. Nike owns multiple registrations for the “Jumpman” logo for use in connection with clothing, basketballs, and sports bags:

Gronk had until September 27, 2017 to respond to Nike’s Notice of Opposition, but failed to do so. The TTAB entered a Notice of Default in this matter on October 6, 2017. It looks like this one may have been settled of the field.

Velcro Gets Creative in Protecting Its Brand from Generic Use

Posted in Trademarks

On August 28, I posted about a case involving the question whether “google” is a generic term for providing a search engine.

Now the good folks at Velcro Companies are fighting the same battle, but they’re trying to attack the problem without litigation about whether the name of their product is generic –  or possibly to provide ammunition in the event of litigation.

Yes, VELCRO is a brand, and a registered trademark.  In fact, there are 23 active U.S. registrations for trademarks including the term “Velcro.”  The oldest of those was issued in 1958 and covered goods described as a “notion-namely, a synthetic material sold in ribbon, sheet, or piece goods form, said material having complemental parts which adhere to each other when pressed together and adapted for use as a closure, fastener, or button for closing garments, curtains, or the like.” A 1975 registration uses terms that sound a little more familiar: “separable fasteners-namely, hook and loop-type fasteners and components thereof.”

The mark is also registered in a graphic form, which looks like this, which also covers “separable fasteners, namely, hook and loop-type fasteners and components thereof” and other things that sound very similar:

The trouble is, some benighted people might be out there referring to hook and loop-type fasteners made by other companies as “velcro.”  You might have done that yourself.

The normal response to this situation is for the owner of the mark to take action to remind the public that VELCRO is a brand, not a generic term, and that the generic term for this stuff is “hook and loop,” so please, please, please don’t use our brand name generically.  It works best if your campaign is one that people might like well enough to pay attention to rather than just turn past.  Velcro Companies has done that with a new campaign: “Don’t Say Velcro.”

The crown jewel of the campaign is a highly-produced video featuring people purportedly from the Velcro Companies’ legal team, singing and dancing while instructing you, with bleeped profanity, on the proper use of their mark.  In fact, some of the cast are Velcro Companies’ lawyers, but there are quite a few ringers in there, too.  You can watch the video here, and I encourage you to do so:

Velcro Companies also has a couple of registrations for a mark that at least suggests that consumers should watch for “real” VELCRO-brand products (below), but those aren’t nearly as good as a viral video.

If you like the video, there’s even a “behind the scenes” video here:

Promoter of Pugilist Products Fails to Prove Priority

Posted in Brands, Trademarks

In a case of first impression, the Trademark Trial and Appeal Board (the “TTAB”) decided that a licensee, even an exclusive licensee who has been appointed by the licensor as its representative for protecting intellectual property rights, cannot assert her licensor’s purported priority rights to prevail in a claim of likelihood of confusion. Moreno v. Pro Boxing Supplies, Inc., Opp. Nos. 91214580 and 91214877, Can. No. 92058878 (TTAB Sept. 8, 2017) [precedential]. Grab a ringside seat as we go through the blow-by-blow!

In one corner, we have Pro Boxing, Inc. who owns a registration for the mark CASANOVA for use with sporting equipment and trainer’s supplies, boxing equipment, and protective boxing gear with a claimed first use date at least as early as 1993. Pro Boxing, Inc. also owns the applications to register the marks for use with athletic, sports, and boxing equipment based on a claimed first use date of 2003.

In the other corner is Ms. Julie Moreno, who, since 2013, has been the exclusive licensee in the U.S. of the intellectual property rights of Deportes Casanova, a Mexican sole proprietorship that owns a registration for the mark in Mexico. Ms. Moreno sells boxing equipment manufactured by Deportes Casanova via the internet. The license agreement appoints her Deportes’ representative for protecting its intellectual property rights in the United States.

As the parties squared off, Ms. Moreno hit Pro Boxing, Inc. with a one-two punch when she opposed registration of Pro Boxing Inc.’s applications and petitioned to cancel its registration on the grounds of likelihood of confusion. She claimed priority based on common law use of the marks by Deportes Casanova in the United States, which she alleged dated back to at least as early as 1972. Ms. Moreno’s status as a licensee of Deportes Casanova afforded her standing in the consolidated proceedings. But she found herself on the ropes when it came to establishing priority.

Though the license agreement appoints Ms. Moreno as Deportes’ representative for enforcing its intellectual property rights in the United States, she led with her chin by not joining Deportes as an opposer/petitioner in the action. To pursue her likelihood of confusion claim, Ms. Moreno claimed priority based on Deportes’ purported common law rights. But until now, the TTAB has never had occasion to decide whether a licensee could establish priority by relying on the licensor’s use of the licensed mark.

The TTAB observed that a licensee’s use of a mark inures to the licensor’s benefit, but there is no authority for the assertion that a licensor’s use inures to the licensee’s benefit. Furthermore, the license agreement that governed the relationship between Ms. Moreno and Deportes specifically refrained from transferring any ownership rights to her so it could not be construed as tantamount to an assignment. Therefore, the clause in the license agreement appointing Ms. Moreno as its representative for protecting Deportes’ intellectual property in the U.S. could only be construed to extend to her use of it (and not to include Deportes’ use of it at any time). In light of the foregoing, the TTAB concluded that Ms. Moreno had failed to prove priority, so it dismissed the oppositions and denied the petition to cancel.

Ms. Moreno may be down for the count after this decision, but she may not want to throw in the towel. If she could persuade Deportes to toss its hat into the ring to bring a new proceeding, it may have better luck proving priority in another bout.

   

CHEERI-NOS

Posted in Brands, Trademarks

Cheerios® may have a trademark registration for the slogan The One and Only®, but the Trademark Trial and Appeal Board shot down its attempt to register the color yellow for its box, finding that it was not the one and only cereal with a yellow box. Cheerios have been a staple on the American family’s kitchen table for decades. In case you forgot what the box looks like, it has a primarily yellow background as shown below.

General Mills sought to register just the color yellow appearing predominantly on packaging for its “O” or “toroidal-shaped” oat-based breakfast cereal.

Individual colors are capable of serving as trademarks and may be registered. Colors, however, have to be associated substantially exclusively with the applicant and must have been used so prevalently that they have acquired secondary meaning. This “secondary meaning” is a legal threshold that means that consumers associate the specific color with a specific good or service. Some of the few successful single color trademarks include UPS’s use of the color brown, the Nexium purple pill, and Tiffany’s use of the robin egg blue on its jewelry boxes and bags.

General Mills’ application was refused registration largely based on the fact that several other breakfast cereals, including some that are oat based and/or “O” shaped also use the color yellow, which is cheerful and thought to promotes the production of serotonin and happiness. Just a few cited in the Board’s decision include:

    

Even though General Mills was trying to limit its registration to “O” shaped oat cereal, the Board found that there was so many other products using yellow as the primary color of the cereal packaging that they could not hold that the public associated the single color yellow with Cheerios alone.

Here is a look back at the Cheerios commercial from around 1952, which apropos for today was in black and white without color:

Is “Google” generic? If only there were a way to search for the answer on the internet!

Posted in Brands, Trademarks

You know you’ve been successful when the name of your product is so prominent that the public uses it to refer to that whole class of product.  When that happens, there’s good news and bad news.  The good part is that your product must be dominating its field.  The bad part is that you may forfeit your trademark rights in your product’s name.  Google is now dealing with a claim that the word “google” has reached that point and is available for everyone to use.

A word that is the name of a type of product is the generic term for that type of product.  Generic terms get no trademark protection.  When the public generally uses the name of a specific product as a generic term, it becomes a case of “genericide” – a killing of the trademark by becoming generic.

The situation is not common, but it happens.  A number of common words began as trademarks but passed over into unprotectable generic terms.  Aspirin, for one.  And escalator.  And cellophaneDry iceThermos.  Trampoline.  For some of those, there are other words we could use for the product, but it’s easy to see why we prefer to call it “aspirin” rather than “acetylsalicylic acid.”  For others, the term is so ingrained that it’s hard to think of what else we would call the product: what’s the alternative to “trampoline”?

By 14 Mostafa&zeyad (Own work) [CC BY-SA 4.0 (http://creativecommons.org/licenses/by-sa/4.0)], via Wikimedia Commons

For obvious reasons, owners of dominant trademarks are not keen to have their marks cross over the line to become generic terms.  When that happens, their formerly valuable mark, which only they were allowed to use on their product, becomes fair game for everybody to use.  That is why the owners of dominant marks often make efforts to “police” use of their marks, or at least to remind the public that it’s a trademark, not a generic term.  We used to see ads every so often reminding us that “Xerox” was a trademark, so you could ask someone to “make a photocopy” of a document, but you shouldn’t ask them to “xerox” it.  (The growth of major competitors to Xerox probably alleviated that problem.)  Other product names that have fought this battle include “Kleenex,” “Clorox,” “Gore-Tex” and “BoTox.”

Which brings us to Google.  On August 14, 2017, David Elliott and Chris Gillespie filed papers asking the Supreme Court to consider whether the term “Google” has become generic.  The dispute arose when Elliott and Gillespie (who I’ll call E&G) registered over 700 domain names including the word “google” plus names of companies, products, people, places, etc. – such as “googledisney.com” and “googlemexicocity.com.”  Google objected and won, and E&G countered by trying to get Google’s registrations for the GOOGLE trademark cancelled on the ground that it is a generic term.

Their argument in Arizona federal court was that, because people use “google” as a verb meaning “to perform an internet search,” the mark has become generic.  Google’s response was that even if people use the term generically as a verb, that doesn’t mean that it is generic for search engines.  The federal trademark law allows a registration to be cancelled when the mark “becomes the generic name for the goods or services . . . for which it is registered,” but as Google pointed out, its registrations cover “computer hardware; computer software for creating indexes of information, indexes of web sites and indexes of other information resources” and other, longer descriptions – but the point is that the registrations cover providing a search engine, not the act of searching the internet.  Because all of E&G’s evidence went to use as a verb rather than use as the name of the goods and services Google’s mark is registered for, Google argued that the evidence didn’t prove anything about the real question in the case.  The district court in Arizona agreed and dismissed the case, and the Court of Appeals for the Ninth Circuit affirmed the dismissal.  (See here and here.)

So now E&G are taking their last shot by filing a petition for writ of certiorari at the U.S. Supreme Court.  It will be a while before we know anything about whether the Court will take the case.  The Court denies most petitions without even requesting a response from the other party.  If the Court is at least somewhat interested it will ask Google to file a response, and then determine whether to take the case.  Even if the Court decides to hear the case, that’s no guarantee that E&G would win.  There’s a long way to go before we ditch the term “search engine” and start referring to Bing as a “google.”

The Beyhive® is buzzing . . . about Trademarks!?

Posted in Trademarks

Beyoncé, also referred to as “Queen Bey”, has cultivated and inspired arguably the largest and most influential fan group in the world, known as the “Beyhive”. Beyoncé’s devoted legion of fans have become well-known for stirring a “buzz” on social media platforms like Twitter. The “hive” is always on high alert for all things Beyoncé and, on multiple occasions, it has even gone on attack to defend the music and pop culture icon. (See this U.S. Magazine article for 12 Times the Beyhive Attacked to Defend Beyoncé: http://www.usmagazine.com/entertainment/pictures/12-times-the-beyhive-attacked-to-defend-beyonce-w206014.) The Beyhive has been buzzing with activity throughout 2017 and you might just be surprised to find out one of the hive’s most trusted news sources . . .

2017 has been “buzzing” with activity:

Beyoncé herself got the Beyhive buzzing back in February of this year when she broke the Internet with her pregnancy announcement. Beyoncé announced that she was pregnant with twins via Instagram and her infamous post has accrued over 11 million likes!

Social media has since become a “hive” of activity surrounding the topic and Queen Bey fans across the globe have been thirsting for news about the twins ever since. This is especially true due to the enormous efforts that Beyoncé and her husband, Jay-Z, take to maintain privacy.

In June, Beyoncé’s father, Matthew Knowles, reportedly broke the news of the twins’ birth via Twitter on June 18, 2017. However, according to TMZ, the twins’ birth certificates reveal they were born on June 13, 2017.

“Say my name, say my name . . .”

As the Beyhive swarmed with excitement about the news of their birth, secrecy continued to surround the twins’ names until . . . (drumroll) . . . the media stumbled upon two trademark applications for “RUMI CARTER” and “SIR CARTER”.

The applications were filed on June 26, 2017, by BGK Trademark Holdings, LLC, the same company that owns numerous federal trademark registrations for marks such as BLUE IVY CARTER, BEYONCÉ, and BEYHIVE, just to name a few. (Fun fact: “BGK” refers to the initials of Beyoncé Giselle Knowles-Carter.)

The USPTO may not be your first thought when it comes to sources of breaking pop culture news. However, Beyoncé and Jay-Z are no strangers to the world of intellectual property rights. They both routinely seek federal protection of their names, taglines, album titles, tour names, etc. Significantly, Beyoncé and Jay-Z previously also filed a trademark application for “BLUE IVY CARTER”, the name of their first daughter who is now 5-years old.

Beyoncé released the first image of her twins and confirmed their names via an Instagram post on July 14, 2017.

Challenges Facing BLUE IVY CARTER®

Interestingly, Beyoncé and Jay-Z first applied for the mark “BLUE IVY CARTER” on a Section 1(b), intent-to-use, basis back in 2012, shortly after their daughter was born. However, according to the USPTO, that initial application was abandoned in 2016 due to the applicant’s failure to file a statement of use or request an extension of time.

Beyoncé and Jay-Z filed a second application for “BLUE IVY CARTER” on January 22, 2016, which is currently facing opposition from a New England-based event planning company that already owns a registered trademark for “BLUE IVY”. The owner of Blue Ivy Events, initiated opposition proceedings on May 10, 2017, asserting three grounds for opposition: (1) priority and likelihood of confusion, (2) no bona fide intent to use the mark in commerce, and (3) fraud on the UPSTO. The second and third grounds for opposition are based, in part, on the alleged disparities between the Declaration of Mr. Jonathan Schwartz (the former VP of BGK Trademark Holdings, LLC) and the statements Jay-Z made to Vanity Fair during a 2013 interview.

In the 2013 Vanity Fair interview, Jay-Z defended the controversial move of trademarking their daughter, Blue Ivy’s, name by telling Vanity Fair they did so to prevent others from profiting off of their family: “People wanted to make products based on our child’s name and you don’t want anybody trying to benefit off your baby’s name. It wasn’t for us to do anything, as you see, we haven’t done anything.”

Even though Jay-Z and Beyoncé haven’t done anything . . . yet . . . there is no denying the strength behind the powerhouse couples’ respective brands. In fact, in May 2017, Forbes announced that Beyoncé and Jay-Z are officially a billion-dollar couple, with Beyoncé worth around $350 million and Jay Z $810 million. (Link to Forbes article: https://www.forbes.com/sites/zackomalleygreenburg/2017/05/17/beyonce-and-jay-z-are-officially-a-billion-dollar-couple/#72e7ec38478e)

There’s no telling how many more bucks could roll in if fans were given the opportunity to purchase Beyoncé-approved merchandise branded with her children’s names. I can picture the Beyhive swarming now . . . a Blue Ivy Carter clothing line . . . Rumi and Sir baby products. . . a Beyoncé-designed baby stroller and carriers. . . seriously, the sky would be the limit!

In an effort to keep the excitement and anticipation at a manageable level, it is important to note that, for now, the trademark applications for BLUE IVY CARTER, RUMI CARTER, and SIR CARTER are all still pending with the USPTO. Stay tuned for trademark updates! If you haven’t done so already, go ahead and subscribe to the Trademarkology blog now. By subscribing, you will receive a notification and email link to every new blog post as soon as they are released.

 

University Licensing Programs

Posted in Trademarks

Can you believe summer is almost over and students are heading back to school? Already some local high schools have begun their fall semester. And college students will be back on campus soon. When I began my freshman year of college, I promptly purchased a sweatshirt with the university’s name emblazoned across the front. That sweatshirt remains in my closet to this day. The bleach stains and holes in the sleeves prevent it from seeing the light of day as often as it once did. But they also show how well-worn and loved it is, and in no way detract from the comfort of wearing it.

I carefully selected that sweatshirt from a wide array of licensed merchandise available in the on campus bookstore. Many colleges and universities have programs and departments dedicated to managing the licensed use of their marks. These programs both promote and protect the school brands. Sometimes schools work with outside companies to help manage the licensing program. And the licensing programs extend far beyond apparel like my sweatshirt. A university may license its mark for use on office products, fitness equipment, health and beauty products, and a range of other goods marketed to consumers.

According to an article published by the Licensing Industry Merchandisers Association just a few years ago, college licensed merchandise accounted for approximately $4.62 billion worth of retail sales. http://www.licensing.org/press-release/collegiate-licensing-company-names-top-selling-universities-and-manufacturers-for-2012-13/. This suggests the market opportunity for university licensing programs may be lucrative. Sometimes they are. But it is unlikely that every university will reap the extraordinary monetary rewards that certain schools (like University of Texas and University of Michigan, who frequently appear towards the top of lists of top selling institutions) enjoy. Nevertheless, university licensing programs abound. So why do universities typically initiate such licensing programs?

Promote sense of community. Students purchase university branded merchandise to show pride in being associated with the school. Branded merchandise also offers schools a way to stay connected and with alumni. Employees, donors, and other stakeholders in the university also like to display their connection with the school. Sporting branded merchandise is one way individuals promote a sense of community associated with the school.

Exercise control over brand. By starting a licensing program, the university exercises control over the quality of the goods and services offered under the mark and ensures that the students, alumni, prospective students, and other school supporters are receiving the same quality they expect to be associated with the school’s brand.

Channel of communication. Licensing programs offer another way to communicate with the school’s constituents consistently and effectively. In turn, the purchase, use, and display of those licensed products communicates with the broader public. In this way, a university may raise its profile and highlight its mission.

Supplement revenue stream. The royalty stream associated with licensing programs also supplements the revenues universities derive from other sources, and may be used to support the university’s mission through scholarships or other programs.

This fall, my college roommates and I will be attending our twentieth reunion. Undoubtedly we will commemorate that with the purchase of licensed merchandise. While nothing can replace the well-worn sweatshirt from my freshman year, perhaps I can find it a worthwhile companion.