A federal judge in the Eastern District of Louisiana has granted summary judgment to Louisiana State University, The Ohio State University, the University of Oklahoma, the University of Southern California and The Collegiate Licensing Company (CLC) in a case where an apparel company was using the respective school’s colors and other identifying characteristics as a way to increase sales.
Not only did the Smack Apparel Company produce shirts with LSU’s purple and gold, Ohio State’s scarlet and gray, Oklahoma’s crimson and cream and USC’s cardinal and gold, but it also leveraged other information that was specific to each school, such as “Got eight?” (on the front) and “We Do! Home of the 8 Time National Champions!” (on the back) in USC colors with the state of California with a star marked “SoCal” (on the back).
The universities argued that while they only own trademark registrations for both their names and their commonly used initials, they have each spent millions over the years marketing items with their initials, names and school colors.
The Lanham Act prohibits “any word, term, name, symbol, or device, or any combination thereof…” that is “likely to cause confusion, or cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities.” Under the Lanham Act, a trademark may be registered if “it is capable of distinguishing the applicant’s goods from those of others.” Based on the court, “there is no question that a color scheme may be protectible as a trademark if it ‘identifies and distinguishes a particular brand’”
However, in order to do so, the plaintiffs must be able to demonstrate that the color schemes have attained “secondary meaning,” which means that the public has to associate the colors with that particular university. There is a high degree of burden of proof which rests on the plaintiff. According to the case, “The Fifth Circuit has adopted a seven factor test for establishing secondary meaning.” In essence, these are length and manner of the use of the mark, volume of sales, amount and manner of advertising, nature of use of the mark in media, consumer-survey evidence, direct consumer testimony and defendant’s intent to copy.
The Plaintiffs were able to demonstrate all seven factors of the “secondary meaning” test, although Smack contends that while it did indeed use the colors of the universities in order to make the connection in the mind of the consumer, they deny doing so as to confuse the public at large.
Additionally, if a product is deemed functional, it may not be protected as a trademark. Again, this burden rests on the Plaintiff. The Plaintiff’s were able to demonstrate that there was no value or function to the apparel without the color schemes, logos and designs. The Defendant’s admitted there is no consumer demand without these identifying characteristics.
The Defendant argued a nominative fair use of the universities’ color schemes. However, the courts determined in Pebble Beach that “the use cannot be one that creates a likelihood of confusion as to source, sponsorship, affiliation, or approval.” The plaintiffs demonstrated the likelihood of confusion and thus the court denied this defense.
And finally, the defendant’s claimed laches, which is “an inexcusable delay that results in prejudice to the defendant.” Again, the court found in favor of the plaintiffs due to the fact that the defendant’s admitted intentionally copying the plaintiff’s color schemes, thus their “bad faith deprives it of the ability to assert the equitable defense of laches.”
Although the CLC is not the exclusive distributor of the university’s materials, the court found that nonetheless, they were entitled to assert a claim. Because they have been given permission to distribute products with the plaintiff’s marks, they have “standing to assert its federal and state claims for infringement and trademark dilution.”
The court, thus, granted the plaintiffs’ motion for summary judgment.
Board of Supervisors of The Louisiana State University and Agricultural and Mechanical College, et al v. Smack Apparel Co. et al.; E.D. La.; NO: 04-1593; 7/18/06
The attorneys take (Bruce Siegal, Senior Vice President and General Counsel for The Collegiate Licensing Company):
“This ruling further validates the efforts of universities to protect their brands against unlawful use of their respective trademarks, colors, and other identifying indicia. This also serves to protect the marketplace position of legitimate retailers and licensees who deserve to be protected against competition from infringers.”
