Start-Up Launchpad Blog

Logo Wars: Iowa Hawks Conquer Southern Mississippi in Fight Over School Trademarks - August 3, 2011

Emily E. Harris, Patent Attorney

The U.S. Trademark Trial and Appeal Board recently sided with the University of Iowa over the University of Southern Mississippi (USM) in a dispute over the similarity of the schools' logos.

Check out Iowa's and USM's respective logos and see what you think.

USM attempted to register their eagle head logo with the U.S. Trademark Office in 2003.  In 2005, after the logo had passed review by the U.S. Trademark Office, but during the time that anyone can oppose the registration of a mark, the University of Iowa filed an action with the United States Trademark Trial and Appeal Board (TTAB) asking that USM's mark not be allowed to register because it was likely to be confused with Iowa's own longstanding, federally registered Hawk logos.  The parties fought for six years, until the TTAB sided with Iowa at the end of last week.

As a result of the TTAB's decision, USM's logo will not receive a federal registration, although USM will have the opportunity to appeal the ruling in federal court.  The decision puts Iowa in a seemingly good position to sue USM for trademark infringement and to request a court order that USM not be allowed to use its logo mark.  Like the TTAB's considerations about whether the mark should be allowed to be registered, trademark infringement cases depend on whether two marks are confusingly similar.  In other words, would a consumer who encountered the marks be confused as to whether they were looking an Iowa product or a USM product because the logos are too similar.  Considering the fact that the TTAB wrote a 52-page opinion explaining why the marks are too close, Iowa probably has a good chance of succeeding in any attempt it will make to force USM to stop using the mark.

Rebranding won't be an inexpensive endeavor for USM, as a cursory review of USM's website shows that the eagle mark is on the basketball court, large signs above the baseball field, painted on the football field and on just about every team uniform. Not to mention the fact that the logo is all over the merchandise for sale at USM's online store.

This is a good example of the power of a federal trademark registration: Iowa adopted its mark first and obtained a federal registration.  The federal registration boosted Iowa's ability to stop USM, who adopted its mark later, based on the nationwide protection enjoyed by the owner of a federal registration.