By Dennis Read

Dennis Read is an Associate Editor at Athletic Management. He can be reached at: dr@MomentumMedia.com.

Salem High School in Virginia Beach, Va., opened its doors in 1989, and soon thereafter a parent-student committee selected the nickname SunDevils for its athletics teams. According to Principal Donald Robertson, the land the school sits on used to be a farm where sundevils (also called dust devils) danced. It seemed like a positive and non-controversial choice for a nickname--and it was for 18 years.

Then, in the summer of 2007, Robertson got a letter from Arizona State University informing him that Salem was improperly using the university's trademarked nickname. It requested that the school "discontinue use of the Sun Devils trademark in all school affiliated settings. These uses include, but are not limited to, wearable merchandise, school Internet Web pages, athletic uniforms, and sports equipment."

Robertson was taken aback. "We're a very successful small high school--sportsmanship awards, great academics, great athletics, and so on, but no one is going to confuse us with Arizona State," he says. "The school colors are different. The mascots are different. The nicknames are not even exactly the same--ours is one word and Arizona State's is two."

On the other side of the table, Arizona State says it has no choice but to act when it discovers another group using its trademarks. "Once we find an infringing use we have to take action or we can lose our trademark rights," says Fernando Morales, Coordinator of the Trademark and Licensing Office at Arizona State.

This past year has seen a bevy of legal action over trademarks among professional, college, and high school athletic teams. The claims made, settlements reached, and jury decisions rendered have provided interesting, must-read insight into how to best protect your logo or other promotional names.

DEVIL OF A TIME
The Arizona State-Salem High School case is not unusual. As high schools gain an increasing presence on the Internet, either through their own efforts or that of local media, trademark holders are much more likely to find out about distant schools using their marks. In this case, Arizona State was unaware of Salem's use of the SunDevils name until some Virginia-area alumni came across it on the Web.

Once the school becomes aware of unauthorized use, Morales says it must take action in order to control the trademark. If it doesn't attempt to police use of its trademarks, the school could eventually lose them. Some familiar examples of previously trademarked names that became generic include aspirin, escalator, and linoleum.

The first step in protecting a trademark is typically a "cease and desist" letter similar to the one Arizona State sent to Salem High School. Although the language in these letters can be intimidating, Morales says that universities are usually happy to work with a school on finding a solution that works well for both parties.

With Salem, ASU offered the high school the option to keep using the name as it had been in return for a one-time $100 licensing fee. Any new uses of the name would have to be approved by ASU. "Our attorney and superintendent felt we might have been able to fight the complaint," Robertson says. "But we would have had to spend a lot of time on it, and they were offering us the opportunity to continue using the name for a minimal fee, so we took it."

In most cases, the university is not looking to get rich off the high school. As a matter of fact, they often spend more in legal costs to enforce their trademark than they get back in license fees. "We don't want to hurt any high school programs," Morales says. "We just want to retain control of ASU's trademarks.

"In fact, with other high schools, we have offered to pay for the redesign of their logo if they don't have the money or resources to make the change," he continues. "Action does not have to cost either side much money if we can reach an understanding."

Ryan Gile, an intellectual property attorney at Weide & Miller, Ltd., in Las Vegas and publisher of the Las Vegas Trademark Attorney Blog, says it's important for a school to take a trademark infringement complaint seriously. "Some people might think they're not doing anything wrong and blow it off," he says. "But if you don't take it seriously, the people seeking to enforce their trademarks could file a lawsuit, and then your school would have to hire an attorney to work out a negotiation. Whereas if you start a dialogue with the other party, you can often come up with a solution yourselves."

WHOSE WHITE OUT?
Trademark cases don't always involve a big guy taking action against a little guy, though. And they aren't always about school names or logos anymore, either. A case currently unresolved is between Penn State University and the NHL's Phoenix Coyotes over using the term "white out."

The conflict began when Penn State encouraged all its fans to wear white for a home football game against Purdue in 2004 and held similar events in the years following. In 2006, the Coyotes informed Penn State that it had trademarked the term "White Out" in 1998. The hockey team allowed the school a one-time use of the phrase, but said any use of the term after 2006 was a violation of their agreement.

"I serve on the licensing committee here at the University, so I'm familiar with the value in protecting a trademark," says Greg Myford, Associate Athletic Director of Marketing at Penn State. "However, I was surprised that we received a complaint from the Coyotes. I'm not sure what impact a Penn State White Out at one of our football games would have on a professional hockey game in Arizona."

"We obviously want to respect the intellectual property of others," says Wayne Mowery, Shareholder and Partner at McQuaide Blasko in State College, Pa., who is working for Penn State on the claim. "But we think this particular brand has become so descriptive of a general promotion that trying to apply it throughout the United States on all athletic events is an overreach. They're trying to prevent everybody and anybody from using what we think has become a descriptive term."

In response, Penn State decided to stake its own claim by filing an application for a trademark on the term "Penn State White Out" in June 2007. The trademark approval process typically takes 12 to 24 months, and Penn State's request is still pending. In the meantime, the school is using the term "Penn State White Out" for a limited number of events. Myford, however, would not speculate on what the school might do should the trademark application be denied.

Even if Penn State had never been contacted by the Coyotes, Mowery says that trademarking "Penn State White Out" makes good sense. The intent is not to take control of others' use of the term "White Out" itself, he explains, but rather to control unauthorized use of the term in connection with Penn State sanctioned events.

"Without the ability to control that Penn State White Out brand, somebody could sell White Out T-shirts at our events and we wouldn't be able to take any enforcement against them unless they were using other Penn Sate marks," Mowery says. "When a person buys an item that's connected to a university event, they tend to think the university controls the goods. So if they find out their T-shirt was made by a sweatshop, they don't contact the manufacturer, they contact the university."

NAMES & NUMBERS
In Wisconsin, it was the name of a conference that set off a trademark tussle. A high school conference, named the Big Eight despite expanding to nine teams almost 20 years ago, was adding another member. The idea of having a 10-member Big Eight Conference just didn't seem right, so the league's athletic directors started working on a new name.

One of the first suggestions, not surprisingly, was the Big Ten Conference. With four of the league's schools located in Madison, home of the University of Wisconsin, a member of the NCAA Division I Big Ten Conference, they wondered if that might cause some problems.

So Luke Francois, Athletic Director at Middleton High School, called Wisconsin Athletic Director Barry Alvarez to see if he had any objections to the high school league's new name. "Barry didn't seem to have a problem with it," Francois says. "But a couple of days later, I got a call from the Big Ten offices. They were adamant that because our high school conference is in the same location as a Big Ten school, the use of the name would not be permitted. And while they didn't state they would take legal action if we continued to pursue it, we figured there was a good possibility they would.

"It was very disappointing, but we didn't feel we had the muscle to stand behind the desire to use the name," he continues. "We knew it would be easier to find another name than to try to fight the Big Ten collegiate conference."

The league regrouped and its second idea was to call itself the Southern Wisconsin Conference, but the athletic directors soon realized this name would cause confusion with the Southwest Wisconsin Conference, which was already well known throughout the state as the SWC. "Ultimately we went back to calling ourselves the Big Eight, but with a new twist," Francois says. "We have added a little byline next to our Big Eight logo that says '10 strong.'"

When in doubt about whether a proposed name is trademarked, both Mowery and Gile suggest searching the U.S. Patent and Trademark Office registries (see "Resources" at the end of this article) to find out what's already registered. There are also companies that, for a fee, will do thorough searches to see if anyone is already using your idea or anything close to it.

That leads to questions of whether or not you should trademark your own promotional properties, such as names and logos. "I generally tell my clients that you want to identify those items--whether they're words, symbols, colors, or sounds--that you want specifically associated with your institution, or those that already have become very connected with it," Mowery says. "To control their use by third parties, you want to make sure they're protected. If it's a promotion that's going to be running every year, for example, and there is some catchy slogan or logo or design element assigned with it, it's probably worth protecting that mark at the federal or state level."

COURT OF LAST RESORT
While most trademark cases are settled outside courtrooms, there was no other solution left for the University of Kansas when it challenged a local T-shirt shop for infringing on its trademarks. The retailer was producing and selling T-shirts in Kansas's colors with slogans like "Muck Fizzou" and "Kansas Swim Team" accompanied by a drawing of sperm cells.

While poor taste is not in itself a reason to claim trademark infringement, the school felt selling unlicensed apparel with references to the University of Kansas was. After its requests to the store to stop producing the shirts were rebuffed, Kansas decided to take the retailer to court and sued for more than $500,000. The figure represented unpaid licensing fees and the profits the shop earned on more than 200 specific T-shirts.

"Like any trademark holder, it's important for us to aggressively defend our marks," says Jim Marchiony, Associate Athletic Director for External Affairs at Kansas. "In our case we're talking about roughly $1 million of licensing revenue that goes directly to scholarship money for both regular students and for student-athletes. This revenue is very, very important to us. Unlicensed use of our marks can reduce the amount of licensed merchandise that is sold and decrease that scholarship money we can provide."

One downside to the legal proceedings was the public relations hit KU took. The local media played it up as a case of David vs. Goliath and the online comments sections of local newspapers and blogs were full of posts painting the university as greedy and heavy-fisted for going after the T-shirt shop.

"We understood that some of the shirts were popular with students, and we expected that it might be portrayed as us picking on someone," Marchiony says. "But we felt the store owner put himself in this position. He could've easily produced shirts on a white background with no reference to the University of Kansas, and we wouldn't have done anything--but that's not what he chose to do."

Knowing they would take some lumps in the court of public opinion, Marchiony and other KU officials did what they could to counter the negative press. "We didn't turn down a single opportunity to talk about this case with the media and we explained the details to as many people as we could," Marchiony says. "Sometimes, though, the media is going to do what it's going to do and you can't worry too much about it. Television news tends to cover things on a very shallow basis, and this was not a shallow story.

"If we were worried about the PR fallout we never would've filed the lawsuit," Marchiony adds. "This was not just about the University of Kansas versus one store owner. This was about the bigger issue of trademark licensing."

Eventually, the jury found that the shop owner was guilty of either infringing on or diluting KU trademarks with 50 of the shirts and awarded the school $127,337. But the owner was cleared of wrongdoing with 156 other shirts.

"We were very happy that the jury found the defendants willfully infringed on our marks," Marchiony says. "But some of the decisions the jury made about certain shirts were surprising, and we'll be going back to the judge for further clarification."

For example, a shirt that said, "Kansas Drinking Team" was cleared by the jury, but the "Kansas Swim Team" shirt was deemed to infringe on KU's trademarks. A shirt saying "Our Coach Can Eat Your Coach" was found to infringe on KU's trademarks, but those with the slogans "Our Coach Beat Anorexia" and "Muck Fizzou" were not.

In the end, this case sums up the ongoing discussion about trademark law. There are few absolutes, just precedents and opinions. The key is to understand the whys behind trademark protection--and to pay close attention to new rulings.

"There's much more concern about trademarks now than in years past," Francois says. "The old school view of 'What's mine is yours,' doesn't apply much anymore and it's up to administrators to be in tune to what's out there."

Sidebar: FIGHTING BACK
What if you receive a trademark infringement cease-and-desist letter and decide you want to fight it? "If the claim is very tangential, and you feel there is little likelihood they are going to press any further claims, you can write back and indicate that you're not planning to comply with the request and provide the reasoning," says Wayne Mowery, Shareholder and Partner at McQuaide Blasko in State College, Pa., who specializes in intellectual property issues. "To actually resolve the issue with some certainty, however, you may have to challenge the trademark registration itself."

Challenging a trademark registration requires filing a petition with the United States Patent and Trademark Office, and should probably only be pursued with help from an attorney. "An argument could be made that it's too broadly descriptive of the goods and services," Mowery says, "or that there were misrepresentations as part of the application for that trademark."

If you have been using the disputed trademark longer than the registered trademark owner and can prove it, you may be able to continue using the mark through a provision in trademark law that allows a "prior use" defense against an infringement claim. "You don't need to actually have a trademark registration to hold trademark rights," says Ryan Gile, an intellectual property attorney at Weide & Miller, Ltd., in Las Vegas and publisher of the Las Vegas Trademark Attorney Blog. "Trademark rights are ultimately based on use. If you're using a name, you automatically are acquiring trademark rights. The scope of that use might be limited, but it may be worth looking into."

Sidebar: DILUTION
Trademark holders have recently been given a little more ammunition in their efforts to protect their names and logos. Ryan Gile, an intellectual property attorney at Weide & Miller, Ltd., in Las Vegas and publisher of the Las Vegas Trademark Attorney Blog, explains that for many years, the main standard of trademark infringement was whether or not a consumer would be confused about the origins of a good. But federal legislation enacted in 2006 has allowed a concept called trademark dilution to take on greater significance.

"Trademark dilution came about because there are instances when, even though there could never be any likelihood of confusion, it just doesn't seem right to let somebody use someone else's trademarked name," Gile says. "Let's say somebody wants to sell Intel brand jockstraps. I don't think anybody in the world is thinking that Intel is going into the business of making jockstraps. However, because Intel is so well known and recognized by the public, it seems unfair to let somebody use the name for a dramatically different good."

This change makes it easier for schools with very well-known trademarks to stop others from using them "It's a powerful weapon for owners of famous marks to use when they can't prove infringement, but still want to stop other people from diluting their marks," Gile says.

RESOURCES
www.uspto.gov
The United States Patent and Trademark Office Web site has a wealth of information on trademarks, including a page where you can search for federally registered trademarks.

www.vegastrademarkattorney.com
Ryan Gile, an intellectual property attorney at Weide & Miller, Ltd., in Las Vegas, keeps track of developments on trademark law on his Web site.

www.athleticmanagement.com
Two years ago, Athletic Management looked at the larger issue of media rights in athletics. Type "Who Owns It" (with quotation marks) into the search engine.

http://media.lawrence.com/news/documents/2008/07/16/Verdict.pdf
The verdict in the case of the University of Kansas against Joe-college.com includes the jury's ruling on each of the 206 shirts in question.