This is UConn Country. Most Connecticut residents associate the colors of navy and gray and the white husky dog with the UConn athletic program. Certainly it is understandable if local businesses use similar color schemes or incorporate UConn’s mascot into their products, logos or storefronts. Other businesses might use similar designs by mere happenstance. But can schools obtain trademark protection for these color schemes and prevent others from using them?
The answer is yes – providing certain conditions are met.
Generally, if the school can demonstrate that the color scheme has attained “secondary meaning” it may be eligible for trademark protection. To discern whether a color scheme has attained such meaning, courts are likely to consider factors such as the length of time and manner in which the color scheme has been used, volume of sales, amount and manner of advertising and marketing, nature of use of the mark in media, consumer survey evidence, direct consumer testimony and defendant’s intent to copy.
This issue was recently decided in the Seventh Circuit Court of Appeals with respect to athletic powerhouses (and multi-million dollar businesses) Louisiana State University, University of Oklahoma, Ohio State University and University of Southern California. In the case of LSU v. Smack Apparel, the aforementioned universities alleged that the defendants infringed upon their trademarks by selling t-shirts depicting the schools’ color schemes and various other identifying information, without naming the actual schools. The Court found that the color schemes had acquired secondary meaning and affirmed the trial court’s ruling.
Interestingly, as Mark Conrad from Sports Law Blog pointed out, the prevailing schools had not registered their colors with the U.S. Patent and Trademark Office. Rather, the schools relied upon common law protection. Nevertheless, colleges and universities may be wise to consider registering their school colors.
LSU v. Smack Apparel was not an isolated incident. Last week, the University of Iowa sent a cease and desist letter to the owner of the Hawkeye Hideaway, a new Iowa City pub and grill, which uses the university’s black and gold color scheme.
Considering that UConn athletics have become big business, it would not be surprising to see the university attempt to protect its signature colors and logo should a person or company infringe upon those marks.
This article is cross-posted on Connecticut Technology & Intellectual Property (http://conntip.com).