The U.S. Court of Appeals for the Federal Circuit has waded into the world of collegiate athletics by affirming a decision of the Trademark Trial and Appeals Board that rejected the University of South Carolina’s bid to register a logo featuring the initials “SC.”
Specifically, it found that the University of Southern California has already registered a logo, using those initials, primarily for use in the sports arena.
The dispute began when South Carolina filed an application to register its Carolina Baseball Logo mark for use on “clothing.” Southern California opposed the registration of the mark, arguing, among other things, that it would create confusion with its own marks. Ultimately, the board refused registration of South Carolina’s mark, finding that the marks were “legally identical” and that the marks “would appear on the same classes of goods in the same channels of trade and that some consumers could exercise little care in making purchases.” South Carolina appealed the finding that there would be a likelihood of confusion.
The appeals court reviewed the Board’s finding that “the goods would be subject to purchase by three categories of consumers. The Board found that one group of purchasers would ‘have a loyalty to and affinity for a particular school’ and would exercise a degree of care in making their purchases. However, the Board found that there were two groups of consumers that would be less sophisticated and exercise less care in making their purchases: consumers purchasing the goods as gifts and ‘new or casual fans.’ Given the inexpensive nature of the goods, the Board found that the gift-purchasing consumers and ‘new or casual fans’ would be susceptible to confusing the two schools’ marks.”
South Carolina had focused its appeal on the Board’s creation of a category for “new or casual fans.” While the panel noted that the creation of the category was based on speculation by the Board, it also found the error to be “harmless,” since the Board “found that the marks were legally identical and would appear on the same classes of goods in the same trade channels. These factors, on their own, support a finding of likelihood of confusion. See, e.g., Cunningham v. Laser Corp., 222 F.3d 943, 948-49 (Fed. Cir. 2000) (finding the Board’s failure to consider consumer sophistication harmless when there was a strong similarity of marks and identity of goods). Thus, even if the Board erred in its finding that certain consumers were unsophisticated, this error would not require reversal of the Board’s decision on the likelihood of confusion.”
Next, the panel turned to another element of the appeal, that the Board did not appreciate the fact that there was limited evidence of actual confusion. The Board had based its decision on the fact that the schools were in different regions.
The panel agreed with the Board’s decision “not to weigh heavily the absence of evidence of actual confusion. The conditions under which there has been no actual confusion render its absence largely insignificant. Although South Carolina identifies instances in which Southern California’s trademark investigator observed both schools’ merchandise in close proximity at various stores, this evidence is only marginally probative because the record provides no insight into whether this commingling occurred over a substantial period of time. See Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1338 (Fed. Cir. 2001). And even though many national retailers sell both schools’ goods, there is no evidence that these retailers routinely display and sell the merchandise at the same store location, let alone side-by-side. Without evidence that the two marks appeared together for a significant length of time, the Board correctly accorded little weight to the absence of evidence of actual confusion.”
University of South Carolina v. University of Southern California; Fed. Cir.; 2009-1064; 1/19/10
Attorneys of Record: (for appellant) Neil C. Jones, Nelson Mullins Riley & Scarborough, LLP, of Greenville, South Carolina. With him on the brief was Ashley B. Summer. (for appellee) Scott A. Edelman, Gibson, Dunn & Crutcher LLP, of Los Angeles, California. Of counsel on the brief was Michael S. Adler, Tantalo & Adler LLP, of Beverly Hills, California.
