Posted: October 27th, 2010
By Alayna R. Ness *
Sometime during my first year at Wake Forest, I had a conversation that went a little something like this:
Classmate: “Do you know Joe Smith? Did you know he went to USC?”
Me: “He did? I didn’t know he’d spent time in LA.”
Classmate (with look of confusion): “I don’t think he did.”
Me (also confused): “But you said he went to USC.”
Classmate: “Right. The University of South Carolina.”
Me (still confused): “Oh. But you said USC. You know that’s in LA, right?”
And on it goes, like a bad round of “Who’s on First.” (There’s another variation where my friend is super excited because Clemson is playing USC and I get very confused about why the game is in Greenville.)
Apparently I’m not the only one who can get confused by this USC-USC business. In January 2010, the Court of Appeals for the Federal Circuit agreed with the Trademark Trial and Appeals Board’s (the “Board”) decision to refuse registration of the University of South Carolina’s (“South Carolina”) baseball logo because it would “create a likelihood of confusion with Southern California’s registrations.” On October 3, 2010, the Supreme Court apparently agreed, denying the University of South Carolina’s petition for certiorari.
South Carolina had appealed the Board’s findings as to the “similarity of trade channels, the care consumers employ when purchasing goods, and the absence of evidence of actual confusion.” Id. at 132. Conversely, South Carolina did not appeal the Board’s findings that the marks were “legally identical and . . . would appear on the same classes of goods.” Id. Although the Federal Circuit agreed with South Carolina that the Board’s findings as to consumer care in purchasing, it also found that the error was harmless. Id. at 134. Moreover, the Federal Circuit was unpersuaded by South Carolina’s counterclaim that Southern California’s trademark registration should be cancelled. Id. at 135. South Carolina had argued that the registration should be cancelled because “the letters ‘SC’ falsely suggest an association with the State of South Carolina.” Id. at 131. Given the number of different things “SC” could refer to, including at least sixteen other colleges and universities, this argument failed. Id. at 136.
So what has been the effect of the ruling? Neil Jones, attorney for the University of South Carolina, said that the “ruling won’t force South Carolina to stop using its interlocking “SC” logo.” Well, as promised, South Carolina is still selling merchandise with its version of the “SC” logo. The real impact is in South Carolina’s ability to protect the use of its logo. South Carolina is still protected by state trademark laws and the common law related to marks, it just cannot rely on federal trademark protection.
Universities can earn large sums of money through the licensing of logos. For example, the University of Arizona received between $750,000 and $1,000,000 in royalties for the use of its name and logos in 2006. Another article remarked that for the 2009 trip to the Rose Bowl, the University of Oregon Ducks’ “most tangible benefit from a bowl berth will be in trademark and licensing revenue.” In a 2007 meeting, University of South Carolina Chief Financial Officer Richard Kelly stated that “the University earned in excess of one million dollars per year in trademark and licensing revenue.” According to the World Intellectual Property Organization, unlicensed merchandise is often associated with lower quality products and can “damage the desired image and reputation of the university.” The Federal Circuit’s decision puts the University of South Carolina in a difficult position. The moral here seems to be, when designing a logo for yourself, be sure it doesn’t look like anyone else’s logo (and especially not like one as well known as Southern California).
I may be new to the South, and I may have lived in Southern California, but even before that, if you had talked to me about USC, South Carolina never would have come to mind. As far as I’m concerned, the “real” USC is the one on the West Coast. I’m pleased to learn the Supreme Court apparently agrees.
* Alayna Ness is a third year law student at Wake Forest University School of Law, graduating in May 2011. She holds a Bachelor of Science in Business from Indiana University. In the summer of 2010, she worked at the Securities and Exchange Commission in Los Angeles, California. Ms. Ness will be taking the bar examination in Virginia and plans to practice corporate and securities law.