–Sharon Armstrong, Attorney
A few weeks ago, the Federal Circuit Court of Appeals issued its decision in The University of South Carolina v. the University of Southern California in South Carolina’s appeal from the Trademark Trial and Appeal Board (“TTAB”). The Federal Circuit affirmed the TTAB’s finding that consumers are likely to be confused by South Carolina’s use of this design on clothing:
And Southern California’s use of this design on clothing:
I’ve written before about the lucrative field of collegiate sports merchandising. Given the millions of dollars at stake, it’s therefore no surprise that these universities have spent thousands upon thousands of dollars taking this case to the Court of Appeals; it’s also no surprise that South Carolina is considering an appeal to the Supreme Court.
In reaching its decision, the Federal Circuit considered many of the usual arguments – such as the parties respective channels of trade (found to be similar), the conditions under which consumers would purchase the parties’ respective merchandise (found to be similar), and the parties’ simultaneous use of their marks in commerce without confusion (found to be insignificant). In fleshing out this argument, the Court noted a number points that would seem to work against a finding of likely confusion: the schools are located on opposite sides of the country, many collegiate sports fans are sophisticated when it comes to recognizing their teams, and no instance of actual confusion has been reported. Moreover, South Carolina presented evidence that at least sixteen other universities and colleges represent themselves as SC, indicating that college students and sports fans are sufficiently knowledgeable to recognize their desired school. (Notably, the parties were able to come to an agreement regarding concurrent use of the mark USC in connection with education services, with Southern California taking Washington, Oregon, California, Nevada, Idaho, Arizona, Utah, Colorado, Wyoming, Montana, New Mexico, Texas, North Dakota, South Dakota, Nebraska, Kansas, Oklahoma, Minnesota, Iowa, Missouri, Massachusetts, Illinois, and Hawaii and South Carolina taking Wisconsin, Mississippi, Indiana, Kentucky, Tennessee, Alabama, Georgia, South Carolina, North Carolina, Virginia, West Virginia, Ohio, Pennsylvania, Maryland, New York, Arkansas, Louisiana, Connecticut, Maine, Vermont, New Hampshire, New Jersey, Florida, Rhode Island, Delaware, the District of Columbia and, interestingly, Alaska).
Nevertheless, the Court upheld the TTAB’s finding that, as the disputed marks are “legally identical,” there is a likelihood of consumer confusion among them. As a result, South Carolina’s application to register its design mark has been refused. While this decision does not prevent South Carolina from using its design mark in connection with merchandise, it does deprive South Carolina of the benefits of registration – including the ability to enforce infringing use of its own mark nationwide.
In a nice article on this matter, the Los Angeles Times has queried, “Would a reasonable person confuse a USC logo on a garnet-and-black ball cap in Columbia, S.C., with the same letters on cardinal-and-gold sportswear worn by a Trojans fan at the Coliseum?”
What do you think?