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
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