By Emily Bayton, ESQ
In 2001, after decades-long use of the full-bodied eagle design shown below (described by some as an “attack eagle”), the University of Southern Mississippi, or as its more commonly known Southern Miss, decided it was time to create a more streamlined design that better fit with Southern Miss’s future licensing plans.[1] The University of Iowa and The Board of Regents, State of Iowa v. The University of Southern Mississippi, Opposition No. 91164745 at 15-16 (July 29, 2011) [not precedential].
OLD LOGO
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Southern Miss hired a graphic design company to create a new logo that better represent the Southern Miss Golden Eagles. After going through many iterations of possible eagle head designs, Southern Miss landed (no pun intended) on the following eagle head:
NEW LOGO
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Described as having the “fierce-eyed gaze of independence,” Southern Miss rolled out its new logo in January 2003. Id.at 15. Just before publicly announcing the new face of Southern Miss Golden Eagle athletics, Southern Miss filed a federal trademark application for its new eagle head design.[2]
The public seemed to immediately embrace the new design and, according to Southern Miss, the new design “suddenly became USM’s ‘best selling logo.’” Id.at 18. All appeared good and promising in the Southern Miss Golden Eagle world until the University of Iowa spotted the eagle (and Southern Miss’ pending federal trademark application) and objected.
The University of Iowa, a large public university located in Iowa City, Iowa, formally opposed Southern Miss’s federal trademark application on grounds that it was confusingly similar to the University of Iowa’s (“Iowa”) previously used and federally registered hawk head design. Id.at 13-14. Iowa’s hawk design (which is often referred to as the “Tiger Hawk”) has been used to represent Iowa and its athletic programs for over 30 years. Id.
In its opposition, Iowa relied on its prior rights in two Tiger Hawk designs (set forth below) shown in U.S. Federal Registration Nos. 1312702 (Class 41), 1772928 (Classes 14, 16, 18, 20, 21, 24, 25 and 28), and 2616009 (Class 41):
Tiger Hawk Design A
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Tiger Hawk Design B
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Iowa also relied on its color versions of the above designs in support of its opposition (as shown below):
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Iowa’s traditional Tiger Hawk design (depicted in Tiger Hawk Design A above) has been prominently used by Iowa for decades in connection with its athletic programs and on related merchandise items. For example, Iowa displays its Tiger Hawk design at all of its athletic facilities, on apparel, on various merchandise items, in its advertising and marketing materials, including on Iowa’s websites, and in many other ways. Id.at 20. Iowa’s Tiger Hawk designs are often featured in black or gold – Iowa’s school colors. Id.at 13-14. Iowa first introduced Tiger Hawk Design B in or around 2001 in an effort to modernize its Tiger Hawk design. Id.at 13. Iowa continues to use both variations of these designs in connection with its athletic programs and on merchandise items. Id.
The Dispute
In its opposition, Iowa claimed that Southern Miss’ updated eagle design is too close in commercial impression to its Tiger Hawk designs such that the consuming public is likely to be confused as to the source of the products covered in Southern Miss’ federal trademark application. Id.at 3-4.
The Factors
In determining likelihood of confusion, the Board analyzes various factors, including the similarity of the marks, the similarity in the goods and services, overlap in channels of trade, degree of case exercised by purchasers, fame of senior mark, actual confusion, bad faith, among others. See In re E.I. du Pont de Nemous & Co., 476 F.2d 1357 (CCPA 1973).
Fame of Iowa’s Tiger Hawk Designs
The Board found the following evidence determinative in establishing that Iowa’s Tiger Hawk designs had obtained a certain amount of fame: (1) Iowa’s 30 years of use in connection with athletic events and various collateral products; (2) high visibility of Iowa’s athletic programs based on its participation in the Big 10 Conference; (3) the ongoing success of Iowa’s football program, including 11 post-season bowl appearances in the last 15 years; and (4) expansive television exposure of Iowa and its athletic teams. Id.at 20. Based on this evidence, the Board held that the Tiger Hawk designs “are at least well-known in the field of national collegiate athletics and, as such, must be accorded a wider scope of protection.” Id.at 20.
Relatedness of the Parties’ Goods and Services
With regard to the relatedness of Southern Miss’ and Iowa’s goods and services, the Board found that the evidence of record clearly demonstrated that the parties’ goods were related, as Iowa’s federal registrations and common law rights in its Tiger Hawk designs and Southern Miss’ application covered identical and closely-related merchandise products. Id.at 22 (emphasis added). The Board opined that although Southern Miss’ application did not cover entertainment services or athletic events (which was covered by Iowa’s federal trademark registrations), the evidence in the opposition showed many uses overlapping with Iowa’s use, including for example, use by Southern Miss of its new eagle design on its athletic uniforms and helmets, in its athletic venues, and in connection with ESPN programs featuring the university. Id.
Overlap in Channels of Trade
In determining whether the parties’ goods were likely to be sold in overlapping channels of trade, the Board focused on the four corners of Southern Miss’ federal trademark application. Id.at 23. Specifically, the Board noted that because Southern Miss’ trademark application did not place any limitations on where the goods would be sold, the TTAB was required to “presume that the identified goods include all trade channels for such goods, especially national sporting goods outlets, and online merchants of collegiate paraphernalia.” Id.at 23-24 (emphasis added). The TTAB also noted that Iowa and Southern Miss are “both prominent NCAA Division 1 universities having potential nationwide markets for their collegiate merchandise and each having aggressive promotional outlets through popular sports television exposure on networks like ESPN, fan clubs and product licensees available through many websites on the Internet.” Id.at 24.
Degree of Care Exercised by Purchasers
Regarding the degree of consumer care at the time of purchase, the Board noted that although loyal fans of the respective universities may be able to distinguish between the schools’ designs, other persons may not be “necessarily attuned to minor differences between somewhat similar sports teams’ logos.” Id.at 26. The Board stated that this is particularly true for persons such as friends or relatives who many be purchasing merchandise as a gift and who may not be familiar with a university’s trademarks. Id.at 26. Therefore, to protect these purchasers from confusion in the marketplace, the TTAB found that this also weighed in favor of a finding of likelihood of confusion.
Similarity of Marks
Not surprisingly, Southern Miss argued that its design and Iowa’s designs “create radically different commercial impressions.” Id.at 29. Southern Miss focused its argument on its claim that Iowa’s Tiger Hawk design “is a collection of four separate silhouette shapes put together in close proximity creating a two dimensional image that is then displayed against backgrounds of changed colors. . ..” Id.As opposed to Southern Miss’ design that is “more complex.” Id. The TTAB, however, did not find Southern Miss’ argument persuasive and held that although one would be able to distinguish between the designs in a side-by-side comparison, consumers would have a much more difficult time distinguishing between the two when encountering them separately in the marketplace. The TTAB found that this was particularly true in this instance where the designs at issue did not feature any wording (making it more difficult from a consumer recollection standpoint), and when the designs are used in connection with identical products (which was the case here). Id.at 32-33. As a result, the TTAB concluded that “the commercial impressions of the marks are essentially the same. . .[b]oth parties’ marks present the head of a bird of prey facing right, and basically oval in shape.” Id
Other Factors
Southern Miss argued that the coexistence of various bird-head designs as collegiate mascots significantly narrowed Iowa’s scope of protection for its Tiger Hawk designs, which diminished any possibility of consumer confusion. The Board disagreed and found that “Iowa should be able to establish a reasonable zone of protection around its Hawkeye marks in spite of the existence of many other representations of bird heads.” Id.at 37.
The Outcome
In sustaining Iowa’s opposition and refusing registration of the eagle head design, the TTAB found that “[o]n balance, the relevant du Pont factors weigh in favor of a likelihood of confusion.” Id.at 52.
The Aftermath
To date, Southern Mississippi has not appealed the decision. Iowa has also elected not to fight this battle outside of the TTAB, which means that other than the federal trademark registration being refused, Southern Miss can continue to make common law use of the design. In fact, the new design is prominently displayed on the university’s website. Time will tell whether this battle of the birds is truly over.
Emily Bayton is a partner in the firm’s Intellectual Property and Technology Practice Group. She focuses her practice primarily in the areas of trademarks and copyrights. She can be reached at EBayton@LRLaw.com.
[1] According to the graphic designer responsible for creating Southern Miss’ new eagle design, the old full-bodied eagle was “a very, very difficult logo to execute in game day and retail product.” Id.at 15-16.
[2] On January 21, 2003, Southern Miss filed a federal trademark application for a black and white version of its new eagle head design, Ser. No. 76/483,437, covering a variety of merchandise goods, including for example, key chains, clothing, blankets, bumper stickers, footballs, and other goods.
