cody kees attorney munson, rowlett, moore & boone “lions and tigers and bears, oh...

CODY KEESAT TORNEY

MUNSON, ROWLET T, MOORE & BOONE

“Lions and Tigers and Bears, Oh My!...Protecting Your School’s

Mascot.”

ASBA School Law Seminar May 2, 2013

Cody Kees mrmblaw.com 501-370-4633

Pop Quiz---Mascots Trivia


Protecting Your School’s Mascot

3 Forms of Intellectual Property Protection

Intellectual Property: Owners are granted certain exclusive rights to a variety of intangible assets (1) Trademarks (2) Copyrights (3) Patents

Trademark

Any word, name, mark, symbol, or device used to identify and distinguish the goods of a person, company, school, etc.

Copyright

A copyright protects works of authorship, such as writings, music, and works of art that have been tangibly expressed.

Photo: Will CountsEncyclopedia of Arkansas History and Culture


http://www.encyclopediaofarkansas.net/encyclopedia/entry-detail.aspx?entryID=470

Patents

Protects inventionsExpensive processGrants the right to exclude others from using,

making, or offering for saleGives the inventor a 20 year monopoly on the

product


Pop Quiz—Patent Trivia

CNN.COM online poll—What invention was voted the greatest invention of all time?

ASKMEN.com online poll—What invention was voted the greatest invention of the last 100 years?


Trademark Protection

Protects your school’s imageProtects others from disparaging your markEnsures others do not profit from your markIt is all about BRANDING!!Last as long as the mark is used in commerce

P.S. --- Any mark or logo is a Trademark, the question is whether the Trademark actually has legal validity.


Trademarks in Arkansas Schools

MascotsLogosMottos

Our Community, Our Commitment, Our Children-Waldron Schools

Soaring to Success! – Cutter Morning Star Preparing Today’s Students for Tomorrow’s Opportunities- Watson

Chapel

Most Arkansas schools have trademarks, but they are NOT registered trademarks, either federally or by the state.


Trademarks in Arkansas Schools

What's a Little John?


http://www.dps-littlejohns.net/What%20is%20a%20lJ.htm

Pop Quiz

World’s Most Recognized Trademark?

Interbrand Report: A global consulting firm, publishes its brand value report every year.


Registry with US Patent and Trademark Office

Lengthy Process (months to years) Initial Application ($275-$375)for EVERY mark Official Gazette Publication Must prove your mark is exclusive Affords national protection of the mark Legal Fee: Generally, $1,500 to complete the

application process and register the mark, including an appeal


Pop Quiz-- Vs.

This mark has been officially registered with the US Patent and Trademark Office.

This is for an unregistered mark. However, the mark may still receive geographical protection.


Registered Trademarks in Arkansas


Razorback Registration


Benefits of Federal Registration

Notice to the public of the registrant's claim of ownership of the mark

Legal presumption of ownership nationwideExclusive right to use the mark on or in

connection with the goods/services listed in the registration Mark is not valid outside the US, though some

countries offer similar registries


Potential Trademark Hazards

Buna High School in Buna, Texas Wanted a new mascot in 2009 School voted on a Cougar Hired a local sportswear vendor to design the mascot

Buna High Mascot, 2009 Penn State Nittany Lions



The school’s use of Penn State’s federally registered trademark was reported to The Collegiate Licensing Company

Cease and Desist letter was sent to the school


Buna School District was given a brief phase-out period for use of the mascot

Had to replace all sports helmets and jerseysHad to repaint school vans and buildings

Pop Quiz

Does your school’s marks (mascot, logos, mottos) have to be federally registered to receive protection against non-authorized users?

NO!!Cody Kees mrmblaw.com 501-370-4633

Review

Part I Understanding federal registered trademarks is

important….remember Burma Schools If your district has the time and financial means,

federal registration is the greatest protection

Part II Your school’s marks likely have local protection There are some simple steps each school can take to

ensure continued protection of your marks


The Lanham Act 15 U.S.C.A. § 1114(1)(a)

A school defending its trademark must prove: (a) that the mark at issue is valid; and (b) that the defendant’s use of the mark is likely to

cause confusion.

US Trademark Registration is NOT required But, cannot use the fancy Will only allow regional protection You have limited rights


The Lanham Act Part (a)

A school defending its trademark must prove:(a) that the mark at issue is valid;

and (b) that the defendant’s use of the mark is likely to

cause confusion.

Valid? Courts look to see if the mark has acquired a secondary meaning. Tri-County Funeral Services, Inc v. Howard Funeral Home, 330 Ark. 789 (1997)


Secondary Meaning

A trademark acquires a “secondary meaning” when it is so well recognized in the community by long and exclusive use the school has a property right in the mark. The mark has meaning to the public beyond the

obvious meaning of the mark itself

White Hall Bulldogs


Secondary Meaning

A mascot has acquired secondary meaning by supplying evidence of the public’s perception of the mark. Factors:

(i) the amount and type of advertising which incorporates the mark;

(ii) the volume of sales of the associated product; (iii) the length and manner of use of the mark; (iv) direct consumer testimony; and (v) surveys.


The Lanham Act Part (b)

A school defending its trademark must prove: (a) that the mark at issue is valid; and (b) that the defendant’s use of the mark is likely

to cause confusion.

Confusion?


Confusion

(1) the strength of the owner's mark; (2) the similarity between the owner's mark and the alleged

infringer's mark; (3) the degree to which the products are in competition with

one another; (4) the alleged infringer's intent, or lack thereof, to pass off

the trademark owner as the source of the goods, or as a sponsor of the goods;

(5) incidents of actual confusion; and (6) the degree of care likely to be exercised by potential

customers. • SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir.

1980)

Confusion

Confusion is present when: (a) the defendant offers services that directly compete

with those offered by the plaintiff (the school district); (b) the defendant offers services that are so related it

implies a common source. UA v. Razorback Sports & Physical Therapy Clinic

The clinic’s name: Razorback Sports and Physical Therapy Clinic The clinic offered staff members who were also employed by the

UA Clinic targeted UA athletes and High School Athletes HOLDINGS: Court found UA’s mark was distinct and use of the

mark by the Clinic caused confusion.

UA v. Razorback Sports & Physical Therapy Clinic

873 F. Supp. 1280 (1995)

Hundreds of vendors use “Razorback” They neither directly compete nor imply a common

source

Razorback Use Across Arkansas

Benefits of Trademark Protection

Financial Collegiate Licensing CLC Universities receive “royalties” for use of its marks Must be wide distribution of the mark Not always limited to Colleges

Knox County School System– Tennessee Local merchants were selling merchandise emblazoned

with school mascots and other logos Schools entered a licensing deal with Strategic

Marketing Affiliates School received a royalty check for $940 within first

month


http://www.clc.com/

Benefits of Trademark Protection

Trademark Dilution (lessening the fame)

Keeps others from infringing on your mark UA Case

Trademark Disparagement

Panther


Charter Schools

17 schools currently in the state4 schools to be added in JulyCurrently, none have organized sports

programsMascots in the future?


State Afforded Protection

The Lanham Act 15 U.S.C.A. § 1114(1)(a) Secondary Meaning

UA v. Razorback Sports & Physical Therapy Clinic

Arkansas Secretary of State Provides State Trademark Registration


Secretary of State

Trademark Registration One page application $50.00 fee Less rigor of “uniqueness” Must “affirm” the mark is not registered state or federally

Wise to consult an attorney Provides remedies for infringement

SOS Trademark Registration


http://www.sos.arkansas.gov/BCS/Pages/trademarkServiceMark.aspx

http://www.sos.arkansas.gov/BCS/Pages/trademarkServiceMark.aspx

The Take-a-Way

Senior Class Project!Locate original artwork associated with your

mascotDocument how long your marks have been in useRegister with the SOS, possibly USPTO.gov Maintain a file of all marks associated with your

schoolIf suspected Trademark Infringement Occurs

Speak with the individual first Arrange a mutual agreement Send a Cease and Desist Letter If necessary, file a lawsuit for injunctive relief


The End

Cody Kees, Attorney with Munson, Rowlett, Moore & Boone [email protected] 501-370-4633 School Law Legal Services

Independent Fact Finding Investigations Teacher Fair Dismissal Act Legislative Compliance Grievance, Termination, and Non Renewal Hearings The Family Medical Leave Act (FMLA)


mailto:[email protected]

cody kees attorney munson, rowlett, moore & boone “lions and tigers and bears, oh...

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