Trademark Infringement
5/13/2009 10:51:49 AM EST
LaFrance on the Unlicensed Merchandising of University Trademarks
Professor of Law, William S. Boyd School of Law, University of Nevada Las Vegas
In Bd. of Supervisors for La. State Univ. Agric. & Mech. College v. Smack Apparel Co, 550 F.3d 465 (5th Cir. La. 2008), an apparel company manufactured and sold t-shirts displaying university names, initials, and color schemes. Four universities and their official licensing agent filed a trademark infringement action against the apparel company. The universities had obtained federal trademark registrations for their names and initials but not for their color schemes. The district court granted summary judgment to the plaintiffs, and on appeal, the court affirmed. In this Commentary, Professor Mary LaFrance examines Smack Apparel and discusses whether university trademarks are protected against unauthorized merchandising in connection with apparel sold to sports fans. She writes:
[T]he Fifth Circuit held that the universities' marks were not functional aspects of the defendant's apparel, because the garments in question would function just as well as articles of clothing without the colors and designs. Furthermore, the court noted that the customers purchased the apparel only because the shirts contain[ed] the plaintiffs' colors and indicia identifying the Universities' football teams. (emphasis added). This led the court to conclude that the presence of the plaintiffs' marks served no purpose unrelated to trademark.
. . . .
The Fifth Circuit's analysis of the traditional digits of confusion led it to conclude that consumers were likely to be confused about the origin of the defendant's goods. The defendant countered, however, that there was no evidence that consumers cared about the origin of the defendant's apparel, or that they preferred their university-related apparel to be officially licensed. In effect, the defendant was arguing that, as used on the defendant's apparel, the universities' colors and insignia were not perceived by consumers as origin indicators. The court rejected this argument, noting that even if consumers did not care whether the defendant's merchandise was officially licensed by the universities, they would nonetheless believe that it was officially licensed, because consumers would be aware that the universities licensed and vigorously policed the use of their trademarks.
(citations omitted)
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