Posted: February 27th, 2013
By: Lindsey Chessum *
CREATE A NEW ACCOUNT
Cisco Systems, Inc. (“Cisco”), one of the largest producers of computer networking equipment, embarked on a campaign in December spending $100 million in hopes of creating a new image. It launched its campaign with a meeting of analysts in New York, quickly followed by a deluge of print materials, webcasts, and commercials. The tagline, “Tomorrow Starts Here.”
This was meant to be a turning point for Cisco. In summer 2012, Cisco’s stock hit a low of $15.12 (compare with low of $15.17 in November 2008), and negative press revolved about the layoff of 1,300 workers. This was Cisco’s coming out after a period of underperformance. This was to be a milestone turning point.
Unfortunately, Cisco ran into some difficulties. East Carolina University (“ECU”) is suing Cisco in federal court for the unauthorized use of “Tomorrow Starts Here.”
ECU’s chancellor stated the university has been using the tagline for ten years. A spokeswoman for Cisco replied with a brief statement voicing surprise, but at this point little more has been said or done by either ECU or Cisco.
The only other source of information is the U.S. Patent and Trademark Office where both ECU and Cisco have trademark filings. According to a USPTO trademark search, ECU’s filing was registered in April 2011. A filing must be approved before the trademark is registered. Then upon registration a trademark becomes enforceable. So, on the other hand, Cisco’s filings have not yet been registered. It was filed on December 10, 2012, according to a search of the USPTO database, when Cisco launched the marketing campaign and is waiting for approval.
USE SYMBOLS AND CAPS
Trademark law follows common sense in many ways. When two entities are claiming the same mark, for example, “Tomorrow Starts Here,” people can become confused. People that know both entities might think there is some connection between the two, that there is a sponsorship or endorsement. Think of the Wake Forest men’s basketball jersey; it has a Nike sign. Nike is the team’s sponsor. What if you see a t-shirt from a 5K race with “Just Do It” on the back? You think Nike is a sponsor, and maybe you decide to participate in that race because you like Nike. The problem arises when you show up for the race, and you figure out it is not Nike, just a small time running club.
Trademark law protects against this by giving the registrant of a trademark exclusive use. Only the person or company who registers a trademark can use it. The other advantage it that registration gives nationwide protection. Thus, ECU, a university in NC, can protect its slogan in NC and the rest of the United States.
There is one applicable limitation on this right to enforce exclusive use. This limitation to exclusive use is the phrase “likely to cause confusion.” As discussed before, the goal of trademark law is to stop consumer confusion. Thus, to enforce an exclusive right to a trademark, the party, ECU in this case, must show that the other party’s use, Cisco, is likely to cause confusion among consumers. When you see “Tomorrow Starts Here” on ECU’s webpage, is it likely you think Cisco is a sponsor of the university? Or conversely, when you see the Cisco tagline is it likely that you will think it is sponsored or endorsed by ECU?
The best place to start is with what the two parties think, ECU and Cisco. Whenever an entity files a trademark, it must select a category to file the trademark under. According to the filings, ECU registered under university-level “educational services,” while Cisco filed with a laundry list of computer hardware and software products and telecommunication services. Are educational services likely to be confused with computer hardware?
Off the bat, these filings appear unrelated, but ECU plans to argue both Cisco and it operate in the same computer technology industry. Specifically, it has an “overlapping field of goods and services.” The best connection for ECU is its College of Technology and Computer Science that has commercialized products and intellectual property. Still outside commentators on the suit are skeptical ECU will be successful.
While ECU acts confidently, Cisco has clearly expressed its surprise about any chance of confusion. The spokeswoman went so far as to say, Cisco is “confident that [its] new campaign does not create any confusion in the marketplace.”
WEAK TO MEDIUM
There are already bets on the suit settling. It is usually a cheaper way to resolve any issue, and it guarantees the complaining party, ECU, walks away with something.
One speculator suggests that universities are always strapped for cash, so ECU is going after Cisco, a deep pocket. He then goes on to mention another theory for the suit. In trademark law the owner of the trademark, ECU, has to take action. Otherwise, it is essentially authorizing the use of its mark. Still the trademark owner must be discerning in the fights it picks. Litigation is expensive, especially when you lose.
A last theory that sounded plausible is that ECU sued Cisco as a defensive tactic. It is possible had ECU not sued, Cisco might have. Being on the defensive end of a fight against a large company like Cisco can be daunting. Cisco has money to spend, and any lawsuit would be focused on destroying or limiting any ownership rights ECU has.
Thankfully for ECU, it is fairly well insulated. It has a registered trademark, proving ownership of the slogan, at least for university level education services.
It cannot be stressed enough, the importance of registering trademarks, and now, filing can be done online.
* Lindsey M. Chessum is a second year law student at Wake Forest University School of Law. She has a Bachelor’s in Economics & Business and a Bachelor’s in Philosophy from Westmont College. She spent nearly two years in the stock market industry prior to law school, and upon graduation in 2014, Ms. Chessum plans to return to California to practice business law.