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Trademarks in Notre Dame and Michigan throwback uniforms September 15, 2011

Posted by Brandon in Technology Forum - the Art.
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This last weekend with the Notre Dame and Michigan football rivalry underway, I wanted to examine the trademark background of their commemorative uniforms.  Adidas released throwback uniforms for both teams for the game, with a more pronounced Adidas mark.

Before going into some preliminary research on the trademark rights in the designs, it would be helpful to outline some basic trademark concepts and practices.  The power to protect and enforce trademarks comes from the Lanham Act, and from state law.  A trademark can be anything from words and symbols, to colors and sounds, but in order to obtain ownership over that mark, there must be an intent to use it.

Deciding whether to register a mark is very important.  While it can be expensive and time consuming, the benefits often far outweigh the burdens.  Registration improves your ability to enforce the mark because registered marks get nationwide priority and apply retroactively against unregistered marks.  Registered marks are categorized by design codes, and made publicly available to the world to place everyone on constructive notice of their existence.  A registered mark becomes uncontestable for five years, and as long as the mark is in use, the rights to the mark are indefinite.  Rights to unregistered marks are also indefinite, but it more difficult to prove continued use because registered marks carry a presumption of intention to use.

The University of Michigan claims to have registered at least five marks, and claim rights to all iterations of the classic “M” logo.  There are also a dozen or more marks which Michigan considers protected without registration.  If Michigan had to enforce these registered and unregistered marks, the process for each could be significantly different.

When a trademark application is filed, the Patent and Trademark Office [PTO] conducts a search of existing marks and examines the distinctiveness of the mark from others.  Arbitrary marks that have no relation to the product, for example “apple” for computers, have a high level of distinctiveness, and accordingly enforceability.  However, marks which are only descriptive, such as “M” for Michigan, would require a secondary meaning to be protected.  Secondary meaning would be granted if the mark clearly denotes a single source or meaning, such as immediately signaling a brand.  After years of use, the Michigan “M” in the context of its color and shape would likely pass, but the analysis could be contentious.

The distinction that is important to recognize is that if a mark is registered, this process takes place in the PTO, where examiners are presumably knowledgeable and specialize in certain marks.  Unregistered marks would be litigated in court.  This is a much more expensive process, and presents more risk to a disputed trademark owner.  For example, the party challenging the mark can show there is consumer confusion between the mark at issue and another mark through public surveys.  Depending on the scope of these surveys, rights to the contested mark could be lost forever.

It is unclear why Michigan has not attempted to register the dozen or so other marks, but it could be because they do not appear to be very distinct, or even original.  The PTO may have already rejected them outright.  Interestingly, the shamrock image on the Notre Dame helmet for this uniform does not appear to have been registered.  As the shamrock image is prolific, there may be litigation over this uniform in the future.

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