Headline Intellectual Property Sports Law Trademarks

The University of South Carolina v. The University of Southern California

The University of South Carolina and University of Southern California have had their fair share of battles this year.  Both schools have mostly defeated the competition, each with only one loss thus far this season.  The two schools have also had to deal with NCAA scrutiny.  Southern California has a 2-year bowl ban, 4 years’ probation, forfeited a year’s games, and lost a slew of scholarships because of improper benefits accepted by Reggie Bush while he was enrolled as a student at the school.   South Carolina dismissed one of the best tight ends in the country, Weslye Saunders, after many questions surrounding whether he accepted any improper benefits.  The two institutions are separated by many miles, yet are similar in many ways, at least when it comes to their football programs.

There is yet another fight that the schools have been fighting.  This fight is against each other, and is for the rights to use the initials “SC”.  While at first, it may seem like a petty argument, the right to use the letters “SC” has a huge financial impact.

Yesterday, the U.S. Supreme Court denied South Carolina’s petition for a writ of certiorari, leaving the United States Court of Appeals, Federal Circuit decision of January 19, 2010 as the law of the land.

South Carolina University attempted to trademark its baseball logo mark.  The University of Southern California, which already had a trademark on a similar “SC” opposed the registration.  The United States Patent and Trademark Office, Trademark Trial and Appeal Board, refused registration of mark.  South Carolina received no help from the courts.

Southern California effectively argued that South Carolina’s mark would create a likelihood of confusion with Southern California’s mark.

Do you think that the images are legally identical?  That’s what was found by the Appeal Board.  Additionally, there was a concern that the the marks would appear on the same classes of goods in the same channels of trade along with some consumers exercising little care in making purchases.

The elements for a likelihood of confusion claim are set out in Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A.1973).  That following factors are to be considered:

  1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
  2. The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
  3. The similarity or dissimilarity of established, likely-to-continue trade channels.
  4. The conditions under which and buyers to whom sales are made, i. e. “impulse” vs. careful, sophisticated purchasing.
  5. The fame of the prior mark (sales, advertising, length of use).
  6. The number and nature of similar marks in use on similar goods.
  7. The nature and extent of any actual confusion.
  8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
  9. The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
  10. The market interface between applicant and the owner of a prior mark:
    1. a mere “consent” to register or use.
    2. agreement provisions designed to preclude confusion, i. e. limitations on continued use of the marks by each party.
    3. assignment of mark, application, registration and good will of the related business.
    4. laches and estoppel attributable to owner of prior mark and indicative of lack of confusion.
  11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
  12. The extent of potential confusion, i. e., whether de minimis or substantial.
  13. Any other established fact probative of the effect of use.

South Carolina’s challenge was based on the 3rd, 4th, and 8th factors.  Needless to say, the school and its attorneys did not persuade the court.