Florida IP Trends

I know this blog is Florida IP Trends, but when my alma mater gets kicked around, I’ll bend the rules a bit.

The University of South Carolina.  My grandfather ran track as a student and went on to coach the swimming team for years.  My mom went there.  I met my wife there, and we were even married at the Alumni House on campus.  My blood is garnet and black (Pantone’s® PMS 202 for the garnet – if you’re picky…)

The Court of Appeals for the Federal Circuit has just affirmed a Trademark Trial and Appeal Board decision in favor of the University of Southern California based on a trademark opposition proceeding they initiated against USC.  (PDF of the decision HERE.)  The original TTAB decision was in 2008, and this new decision is merely the result of South Carolina’s appeal of that decision.  MP3 of the oral argument available HERE.  Basically, USC wanted to register the interlocking stylized SC logo as shown in the top hat in the picture to the left.  Southern California has a trademark registration for SC in “standard character form” for similar goods.  This essentially allows them to prevent any other company or university from using “SC” in any font for goods that are similar to those in Southern California’s registration.

In the wake of the appellate decision, the sports blogs and media outlets have been running with the story.  See HERE, HERE, HERE, HERE.  (John Welch of the excellent TTABlog® also commented HERE.)

Sadly, one of the most talked-about things in this whole case is the University of Southern California’s attorney’s attempt to be funny in remarking on the ruling.  The Los Angeles Times is reporting that attorney Scott Edelman suggested that the interlocking SC logo was a better fit for the Trojan’s warrior image as opposed to USC’s “goofy little chicken” and that it was “totally understandable” that USC would want to move way from the Gamecock logo (which USC isn’t doing BTW).  Say what?   If we must use “chicken” at all, we prefer the phrase “ass-kickin’ chicken” to “goofy little chicken,”  but the comment was just rude and unnecessary.  I’m sure all the Tommy Trojans out there will be high-fiving Edelman for his disrespect.

On one hand I think it’s great that people are talking about trademarks and the opposition process, but on the other hand, it’s painful to see the misinformation about that process.  I have seen several articles that suggest USC will not be able to use any “SC” logos anymore.  This is not true.

I’m directing you to a post that my law school Trademarks professor happened to write just the other day concerning the difference between opposing a trademark application and suing someone for trademark infringement.  There is a big difference, and the fact that USC might not be able to register the interlocking SC logo does not necessarily mean that they can’t still use it.  To prevent USC from using it, Southern Cal. would have to initiate and win an infringement lawsuit – a lawsuit which would be decided based on whether or not the consuming public is likely to be confused by the logos.  So, onward to Professor Randazza’s post.

NOTE: According to the oral argument, USC and S.Cal. have an agreement providing for both schools to have USC registrations.  A registration is very valuable when negotiating licenses because it shows the potential licensee that the trademark has been vetted by the USPTO – which, in theory, means the chance of a lawsuit over the trademark is diminished.

Ironically, if you would like more information about the University of South Carolina, please visit www.SC.edu.