by Mark Malek

Those of you who know me know that I am a sports junkie.  GO JETS – sorry, I had to find a way to subtly get that one in there.  If you are reading this and thinking that you are about to hear me rant and rave about coaching changes or NCAA violations at Southern Cal, you are in for a surprise.  This is a true intellectual property dispute between two schools with teams that I don’t particularly appreciate and with football coaches that are not on my top ten list (especially you Kiffin).

Anyway, the Trojans of Southern California have dealt a trademark blow to the South Carolina Gamecocks.  This dispute revolves around the logos for each school and, more specifically, the logos that each school prints on their apparel.  South Carolina appealed a decision from the Trademark Trial and Appeal Board refusing to register the school’s logo and also refusing to cancel a Southern California trademark.  The Federal Circuit upheld both decisions.

Southern California opposed registration of South Carolina’s trademark application and argued that registration of the South Carolina trademark application would cause confusion with two Southern California trademark registrations.  In response South Carolina counterclaimed for cancellation of the two Southern California trademarks.  The main argument, though, was that the Southern California trademarks falsely suggested an association with the State of South Carolina.

In short, after going through a detailed discussion regarding the factors that a court must analyze when determining whether a likelihood of confusion exists between two marks, the Federal Circuit upheld the decision of the TTAB and noted that registration of the South Carolina trademark would likely cause confusion with the two registered trademarks owned by Southern California.

With respect to the issue of whether or not the Southern California trademarks should be canceled because it created a false association with The State of South Carolina, the TTAB granted summary judgment against South Carolina, stating that the university lacked standing to even bring the suit.  Although the Federal Circuit disagreed with the TTAB’s conclusion on standing, it nevertheless agreed that summary judgment was proper.  In order to have standing in a trademark cancellation, a party must only demonstrate that it had a reasonable belief that it would be damaged by the registration in question.  The Federal Circuit ruled that South Carolina had demonstrated such reasonable belief, but had failed to raise an issue of material fact regarding the actual existence of any damage.

The court went on to note that “SC” refers to many entities aside from the State of South Carolina.  The Court pointed to the fact that South Carolina itself offered evidence showing that sixteen other universities and colleges represent themselves as “SC.”  Therefore, the Court found that South Carolina could not show that use of the initials “SC” uniquely pointed to the State of South Carolina.  On that basis, the Court affirmed the ruling of the Board.

At the end of the day, this came down to money.  These are two universities that generate a substantial portion of their budgets based on their sports teams.  They are both located in geographical markets that they dominate, i.e., no other real professional teams in the area that they truly compete with, e.g., football.  Of course, the consumer, i.e., the fans, are not confused over the origin of the goods of services because the symbols on the these caps are somewhat similar.  A fan of either of these teams would likely not mistakenly purchase merchandise of the wrong team.  Just ask Kevin Wimberly, over at Florida IP Trends, if he wants a McDonald’s themed Gamecocks hat.