Trademark Using College Initials for Apparel

[LesBruno]

Is it a trademark infringement to use a college's initials and colors? For instance, USC can stand for University of Southern California AND University of South Carolina and both uses a shade of red. I understand that it is almost impossible to trademark initials or acronyms but you can if a certain "look" in the sense of font styles combined with colors would be distinguishable and unique. My concern would be if I were to offer let's say a red shirt with white copy Tshirt or hat that says "Go USC!" that can be purchased by either university, would that be a TM infringement? Obviously they can serve me with a "cease and desist" and and I don't have the deep pocketbook at my disposal so what would be my strategy? And would a blue "Go BYU!" shirt be contested in the trademark arena with Brigham Young University? Mind you, these are generic color shirts with generic fonts (obviously not the same as the universities) and would not have the school's logo or any copy that you can identify as being affiliated to the college. Thoughts?

 

[Michael Wechsler]

Very good question. There are a number of cases involving university trademarks and school colors. The earlier cases appear to be targeted at colors and then some unquestionable connection with the school such as: Board Of Supervisors, et al. v. Smack Apparel Co., 550 F.3d 465 (2009). A court found that infringement did exist when a t-shirt creator made references to a college bowl game and used school colors. It applied the typical "likelihood of confusion" test that is generally used in order to determine whether the average consumer would think that the origin of the apparel was the school.

Here is a very complete article on the University of Ohio's cease and desist letters and lawsuit alleging infringement of a team's colors and just a letter. You may want to read the Ohio State complaint against infringing apparel.

Let's assume that you may be right in the end about mere letters and color combinations not being infringing. But if you attract any attention, you'll probably attract a cease and desist and a lawsuit you may need to defend against big money plaintiffs. The sports apparel business is probably a billion dollar industry. Trademark owners are very vigilant about policing their marks and you may discover that to be the case should you try to introduce something clever such as a university shirt with colors and initials that are clearly suggestive. Being hypothetically called to testify and explain why you used those initials, you'd be admitting that you were directly targeting what universities generally license under their trademark guidelines such as USC.