CODY KEESAT TORNEY
MUNSON, ROWLET T, MOORE & BOONE
“Lions and Tigers and Bears, Oh My!...Protecting Your School’s
Mascot.”
ASBA School Law Seminar May 2, 2013
Cody Kees mrmblaw.com 501-370-4633
Protecting Your School’s Mascot
3 Forms of Intellectual Property Protection
Intellectual Property: Owners are granted certain exclusive rights to a variety of intangible assets (1) Trademarks (2) Copyrights (3) Patents
Trademark
Any word, name, mark, symbol, or device used to identify and distinguish the goods of a person, company, school, etc.
Copyright
A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed.
Photo: Will CountsEncyclopedia of Arkansas History and Culture
Cody Kees mrmblaw.com 501-370-4633
Patents
Protects inventionsExpensive processGrants the right to exclude others from using,
making, or offering for saleGives the inventor a 20 year monopoly on the
product
Cody Kees mrmblaw.com 501-370-4633
Pop Quiz—Patent Trivia
CNN.COM online poll—What invention was voted the greatest invention of all time?
ASKMEN.com online poll—What invention was voted the greatest invention of the last 100 years?
Cody Kees mrmblaw.com 501-370-4633
Trademark Protection
Protects your school’s imageProtects others from disparaging your markEnsures others do not profit from your markIt is all about BRANDING!!Last as long as the mark is used in commerce
P.S. --- Any mark or logo is a Trademark, the question is whether the Trademark actually has legal validity.
Cody Kees mrmblaw.com 501-370-4633
Trademarks in Arkansas Schools
MascotsLogosMottos
Our Community, Our Commitment, Our Children-Waldron Schools
Soaring to Success! – Cutter Morning Star Preparing Today’s Students for Tomorrow’s Opportunities- Watson
Chapel
Most Arkansas schools have trademarks, but they are NOT registered trademarks, either federally or by the state.
Cody Kees mrmblaw.com 501-370-4633
Trademarks in Arkansas Schools
What's a Little John?
Cody Kees mrmblaw.com 501-370-4633
Pop Quiz
World’s Most Recognized Trademark?
Interbrand Report: A global consulting firm, publishes its brand value report every year.
Cody Kees mrmblaw.com 501-370-4633
Registry with US Patent and Trademark Office
Lengthy Process (months to years) Initial Application ($275-$375)for EVERY mark Official Gazette Publication Must prove your mark is exclusive Affords national protection of the mark Legal Fee: Generally, $1,500 to complete the
application process and register the mark, including an appeal
Cody Kees mrmblaw.com 501-370-4633
Pop Quiz-- Vs.
This mark has been officially registered with the US Patent and Trademark Office.
This is for an unregistered mark. However, the mark may still receive geographical protection.
Cody Kees mrmblaw.com 501-370-4633
Benefits of Federal Registration
Notice to the public of the registrant's claim of ownership of the mark
Legal presumption of ownership nationwideExclusive right to use the mark on or in
connection with the goods/services listed in the registration Mark is not valid outside the US, though some
countries offer similar registries
Cody Kees mrmblaw.com 501-370-4633
Potential Trademark Hazards
Buna High School in Buna, Texas Wanted a new mascot in 2009 School voted on a Cougar Hired a local sportswear vendor to design the mascot
Buna High Mascot, 2009 Penn State Nittany Lions
Cody Kees mrmblaw.com 501-370-4633
Potential Trademark Hazards
The school’s use of Penn State’s federally registered trademark was reported to The Collegiate Licensing Company
Cease and Desist letter was sent to the school
Potential Trademark Hazards
Buna School District was given a brief phase-out period for use of the mascot
Had to replace all sports helmets and jerseysHad to repaint school vans and buildings
Pop Quiz
Does your school’s marks (mascot, logos, mottos) have to be federally registered to receive protection against non-authorized users?
NO!!Cody Kees mrmblaw.com 501-370-4633
Review
Part I Understanding federal registered trademarks is
important….remember Burma Schools If your district has the time and financial means,
federal registration is the greatest protection
Part II Your school’s marks likely have local protection There are some simple steps each school can take to
ensure continued protection of your marks
Cody Kees mrmblaw.com 501-370-4633
The Lanham Act 15 U.S.C.A. § 1114(1)(a)
A school defending its trademark must prove: (a) that the mark at issue is valid; and (b) that the defendant’s use of the mark is likely to
cause confusion.
US Trademark Registration is NOT required But, cannot use the fancy Will only allow regional protection You have limited rights
Cody Kees mrmblaw.com 501-370-4633
The Lanham Act Part (a)
A school defending its trademark must prove:(a) that the mark at issue is valid;
and (b) that the defendant’s use of the mark is likely to
cause confusion.
Valid? Courts look to see if the mark has acquired a secondary meaning. Tri-County Funeral Services, Inc v. Howard Funeral Home, 330 Ark. 789 (1997)
Cody Kees mrmblaw.com 501-370-4633
Secondary Meaning
A trademark acquires a “secondary meaning” when it is so well recognized in the community by long and exclusive use the school has a property right in the mark. The mark has meaning to the public beyond the
obvious meaning of the mark itself
White Hall Bulldogs
Cody Kees mrmblaw.com 501-370-4633
Secondary Meaning
A mascot has acquired secondary meaning by supplying evidence of the public’s perception of the mark. Factors:
(i) the amount and type of advertising which incorporates the mark;
(ii) the volume of sales of the associated product; (iii) the length and manner of use of the mark; (iv) direct consumer testimony; and (v) surveys.
Cody Kees mrmblaw.com 501-370-4633
The Lanham Act Part (b)
A school defending its trademark must prove: (a) that the mark at issue is valid; and (b) that the defendant’s use of the mark is likely
to cause confusion.
Confusion?
Cody Kees mrmblaw.com 501-370-4633
Confusion
(1) the strength of the owner's mark; (2) the similarity between the owner's mark and the alleged
infringer's mark; (3) the degree to which the products are in competition with
one another; (4) the alleged infringer's intent, or lack thereof, to pass off
the trademark owner as the source of the goods, or as a sponsor of the goods;
(5) incidents of actual confusion; and (6) the degree of care likely to be exercised by potential
customers. • SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir.
1980)
Confusion
Confusion is present when: (a) the defendant offers services that directly compete
with those offered by the plaintiff (the school district); (b) the defendant offers services that are so related it
implies a common source. UA v. Razorback Sports & Physical Therapy Clinic
The clinic’s name: Razorback Sports and Physical Therapy Clinic The clinic offered staff members who were also employed by the
UA Clinic targeted UA athletes and High School Athletes HOLDINGS: Court found UA’s mark was distinct and use of the
mark by the Clinic caused confusion.
UA v. Razorback Sports & Physical Therapy Clinic
873 F. Supp. 1280 (1995)
Hundreds of vendors use “Razorback” They neither directly compete nor imply a common
source
Razorback Use Across Arkansas
Benefits of Trademark Protection
Financial Collegiate Licensing CLC Universities receive “royalties” for use of its marks Must be wide distribution of the mark Not always limited to Colleges
Knox County School System– Tennessee Local merchants were selling merchandise emblazoned
with school mascots and other logos Schools entered a licensing deal with Strategic
Marketing Affiliates School received a royalty check for $940 within first
month
Cody Kees mrmblaw.com 501-370-4633
Benefits of Trademark Protection
Trademark Dilution (lessening the fame)
Keeps others from infringing on your mark UA Case
Trademark Disparagement
Panther
Cody Kees mrmblaw.com 501-370-4633
Charter Schools
17 schools currently in the state4 schools to be added in JulyCurrently, none have organized sports
programsMascots in the future?
Cody Kees mrmblaw.com 501-370-4633
State Afforded Protection
The Lanham Act 15 U.S.C.A. § 1114(1)(a) Secondary Meaning
UA v. Razorback Sports & Physical Therapy Clinic
Arkansas Secretary of State Provides State Trademark Registration
Cody Kees mrmblaw.com 501-370-4633
Secretary of State
Trademark Registration One page application $50.00 fee Less rigor of “uniqueness” Must “affirm” the mark is not registered state or federally
Wise to consult an attorney Provides remedies for infringement
SOS Trademark Registration
Cody Kees mrmblaw.com 501-370-4633
The Take-a-Way
Senior Class Project!Locate original artwork associated with your
mascotDocument how long your marks have been in useRegister with the SOS, possibly USPTO.gov Maintain a file of all marks associated with your
schoolIf suspected Trademark Infringement Occurs
Speak with the individual first Arrange a mutual agreement Send a Cease and Desist Letter If necessary, file a lawsuit for injunctive relief
Cody Kees mrmblaw.com 501-370-4633
The End
Cody Kees, Attorney with Munson, Rowlett, Moore & Boone [email protected] 501-370-4633 School Law Legal Services
Independent Fact Finding Investigations Teacher Fair Dismissal Act Legislative Compliance Grievance, Termination, and Non Renewal Hearings The Family Medical Leave Act (FMLA)
Cody Kees mrmblaw.com 501-370-4633
Top Related