Trademark Tension: Fear Whose Spear?

John Frazier Jr., Guest Author

As a recent graduate of The Florida State University (FSU) this story, Southeast High School using FSU’s logo, caught my attention. As the images depict, there is no arguing that these are blatant copies of the original FSU IP. The variations are minimal and, if I may, awfully done. Some in the public and others may wonder why a university would come down on a high school and ask them to cease and desist the use of their logo. After all, shouldn’t the use of these logos promote the universities themselves? Shouldn’t this be looked at as a form of flattery? Why does it even matter?

The problem with FSU just letting a high school use their trademark logo is that once they stop enforcing their trademark they may soon begin to lose the rights to their trademark. As you may well know, a university’s trademark logo is an important image. This is an image that becomes associated with the university and their athletic teams. When that line becomes ambiguous as to who owns the rights to a registered trademark logo then anyone can reproduce it without a licensing agreement from the university. Furthermore, FSU and other universities receive money from the use of their registered trademarks through licensing. Licensing leads to an increase in revenue and allows the universities to expand programs or to bolster scholarship funds (I am not fully aware of what they actually do with the money acquired from licensing).

Ever notice that some teams wear different branded uniforms? There are bidding wars between Nike, Adidas, and Under Armor over who gets the license to produce gear for their athletic teams. The brand being worn by the universities athletes and the gear sold depicting the school’s logos have paid the universities to use it (usually, exclusively). For example, it is very rare to see an Under Armor school, such as Auburn, have any clothing that has a Nike logo. These contracts made by the clothing companies with the universities generate money in the millions. If FSU or other universities were to simply let high schools use their logos without periodically checking for use of and enforcing their trademark logo then they would no longer receive money from Nike or Under Armor. Those companies would be able to produce clothing without the universities consent while earning money off of those purchased by consumers, and do so without the universities to which they make their revenues from receiving a single penny.

It is also important to note that if FSU does not know of a school using their trademark logo then the school can continue to display that logo until they receive contention from FSU. It is FSU, or the universities, responsibility to enforce their rights. This is where the high schools argue that since they have been using the logo for periods of 20+ years that they shouldn’t have to alter it. Their argument is that it would cost thousands, if not more, to remove the images from the school and their uniforms. However, the fact of the matter is that they shouldn’t be using someone else’s IP without consent and license. In a way, the high school is essentially arguing that they are the owners of FSU’s trademark logo or that their logo is not committing license infringement. As FSU President Eric Barron said best (summarizing the issue also):

As the owner of such marks, Florida State must exercise control over the use of identifying marks or risk dilution or loss of the marks over time. FSU is not alone in exercising control over identifying marks. Many universities will not permit high schools to use their marks, or are charging for their use. Florida State has taken a different approach in proposing Southeast High School’s use of licensed marks at zero dollars. The University is disappointed that the School Board of Manatee County might reject such an offer.

FSU has a right and the duty to protect its trademark and offering it to be licensed to Southeast High School for the price of zero dollars would seem a fair settlement. This way, nothing changes except that FSU has protected the trademark. This also means that litigation will be avoided and that the unnecessary use of tax dollars will not be spent.