If you have heard of Penn State, you have probably heard the phrase “Happy Valley.” The school, the students, and the media regularly use “Happy Valley” in reference to the school and the surrounding community. The school considers the association so strong that Penn State recently applied to register HAPPY VALLEY as a trademark for clothing – and received a refusal to register.

The Trademark Office examining attorney assigned to the application refused registration on the ground the phrase “Happy Valley” is geographically descriptive. This means that the examining attorney concluded the public will see the phrase simply as describing the geographic area where the school is located. The school’s own website seems to confirm the examining attorney’s concerns, as it describes “Happy Valley” as an “also known as” name for the town, State College.

But don’t worry Penn State fans. The university has a strong chance to overcome the refusals so long as Penn State can demonstrate the HAPPY VALLEY trademark has acquired distinctiveness in the minds of consumers. Marks that may initially be considered geographically descriptive or may become distinctive after sufficient use of the mark in commerce.

For example, use of a trademark for five years or longer may be sufficient to overcome a refusal on this ground. In fact, the examining attorney expressly references this option in the Office Action. Accordingly, chances are good Penn State can overcome this refusal simply by submitting a declaration that the university has used the mark in commerce for more than five years. However, the Trademark Office will also consider other evidence such as widespread advertising efforts, significant sales numbers, and substantial media attention and publicity.

As a fellow alum of a Big Ten university (which university isn’t important), I wanted to provide some assistance in gathering evidence in support of Penn State’s potential claim of acquired distinctiveness for the HAPPY VALLEY trademark.

If you’ve heard of Penn State, you know they receive a lot of publicity for their college sports teams. For example, this ESPN article prominently uses HAPPY VALLEY to refer to Penn State with its headline “Iowa silences No. 5 Penn State in Happy Valley.”

The Penn State wrestling program is also among the best in the country. Historically, the Happy Valley-based wrestling squad has the third-most successful program in the country, with 8 (!!) NCAA national championships , just slightly trailing Iowa’s 23 national championships.

Last, but certainly not least, Penn State can point to a visit last month from the Big Ten Tournament Champions and presumptive NCAA ’s basketball player of the year Megan Gustafson. Yet again Penn State received some great publicity associating the claimed HAPPY VALLEY mark with the University, as media ran with the headline “Iowa Cruises in Happy Valley.”

With all this evidence, Penn State fans should feel good about the likelihood they’ll soon be able to purchase HAPPY VALLEY t-shirts with a ® symbol adjacent to the phrase (exclusively from a licensed retailer). Of course, if they need more evidence, I’m sure I can find some fellow Big Ten organizations that would be happy to add some new headlines in 2019.

– Draeke Weseman, Weseman Law Office, PLLC

On Monday, the University of Oregon and The Ohio State University will play in college football’s first College Football Playoff championship game. DuetsBlog has previously covered the trademark issues surrounding BCS Properties’ attempt to register College Football Playoff as a trademark in connection with college football playoff games here. Even if College Football Playoff ultimately fails as a trademark, Monday’s championship game will be awash in trademarks and intellectual property. Consider this your DuetsBlog guide to the game.

UNIVERSITY OF OREGON

We’ll start with Oregon, and begin with a little history. In 1859, Congress required Oregon to set aside land for a state university as a condition for admittance into the Union. Oregon chose land in Eugene, and, in the mid-1870s, began building what is today the University of Oregon®, or Oregon®, or just UO®. Although all eyes will be on the Oregon Ducks’® football team on Monday night, Eugene may be better known to many as Track Town USA® thanks to the success of Oregon’s track team under Bill Bowerman in the 1960s and 70s. During that time Bill Bowerman introduced jogging to the American public, coached the legend Steve Prefontaine, met Phil Knight, and started Nike, Inc.

Nike has maintained a strong relationship with Oregon ever since, hiring grad Tinker Hatfield in the 80s to design Air Jordan shoes (but not the ones blogged about here) and grad Dan Weiden’s agency Weiden-Kennedy, to coin the tag line “Just Do It” while developing TV ads like “Bo Knows” to sell newly invented cross-training shoes (also designed by Tinker Hatfield.) Today, Nike designs not only Oregon’s football uniforms, but also the special uniforms for all four teams that played in the College Football Playoffs, branding them from head to toe, and even hands:

For those interested, these uniform deals are influential, lucrative, and signed on a team-by-team basis.

Continue Reading Topics of Conversation for Your College Football Playoff Party

Colleges serve an important role in American society, providing education, experience and leadership to each new generation. Also, sports. And did I mention SPORTS? Regardless of the reason (cable?), college sports have become a huge business over the last 25 years, with NCAA schools having a reported annual value of $8 billion (without including revenue generated for private companies). That number may not be accurate, but given the number of Division 1 school football and basketball programs, price of tickets, number of games, broadcast rights, merchandise, etc., I don’t think that’s an exaggerated number. And with revenue like that, it isn’t surprising that universities rely on trademark law to protect their brands.

Earlier this week, Oklahoma State University (OSU) filed a lawsuit against New Mexico State University (NMSU) over NMSU’s renewed use of its retro cowboy logo. The two logos are shown side by side below:

Hard to argue that those aren’t similar. OSU claims use of its mascot all the way back to the 1920s. NMSU claims use of their logo back to 1960s. However in 2005, NMSU moved toward a more modern logo. However, NMSU’s recent decision to sell merchandise featuring the old logo apparently sparked the lawsuit. On its website, NMSU has a document chronicling the history of its logo in which it admits that it “initially” paid royalties to OSU for use of the logo. There is no explanation of when these royalties ceased.

Of course, fans of the University of Wyoming might be a bit confused too. As it turns out, Wyoming has a similar logo that it uses, shown below:

Apparently OSU also objected to Wyoming’s use, but they reached a concurrent use agreement in 1993.  Based on the reported terms of the agreement, OSU concluded that so long as the respective logos appear in each school’s respective colors and with some text located on the clothing, that the two schools could avoid any confusion (oh, and don’t forget the royalties…). The NMSU design is already in NMSU’s colors, so perhaps OSU is just taking a really expensive route to get NMSU to add some text to the design. Or it could be the royalties. I’ll let you decide.

The dispute highlights an interesting aspect of trademark law. Regardless of the type of products involved or the amount of money on each side, the question ultimately comes down to consumer perception and whether consumers are likely to be confused. Sports teams, especially college teams, frequently use identical names for their mascots and teams. For example, the name “cowboys” is used by both, you guessed it, OSU and Wyoming (Also, another football team that you may heard of down in Dallas…). As far as Aggies go, you’ve got NMSU, Delaware Valley College, North Carolina AT&T, Texas A&M, UC Davis, and Utah State. I don’t know all of them, but this Wikipedia article lists 76 different Eagles, 46 Tigers, 39 Bulldogs, and 33 Panthers. In short, consumers are accustomed to relying on indicia other than merely the name (and likely the logo) to determine the source or sponsorship of the goods, such as the colors, school name, acronyms, etc.

But if you’re looking for unique college mascots, you’ve got the Fighting Okra of Delta State University in Mississippi, the Geoducks of Evergreen State College (it’s a type of mollusk, apparently), the Scotsdale Community College  Fightin’ Artichokes, or the St. Louis University Billikens. You never hear about any trademark disputes over mollusks or artichokes, do you?

But back to our friendly cowboys. The lawsuit seems a bit surprising. After all, the parties apparently had a forty year agreement and working relationship. Or, if “initially” paying royalties only meant a few years (5, 10?), NMSU used the logo the remainder of the 40 years without objection by OSU. The agreement with Wyoming also weakens OSU’s claim, but probably not enough to preclude a successful claim. I’d be highly surprised if the dispute lasts very long, as it seems to be ripe for settlement. Even in the billion dollar industry of college athletics, settlement is often the most efficient means of settling trademark disputes, especially if you both have pistols.

 

– Derek Allen, Attorney –

Less than nine months ago, the powers-that-be in college football approved a plan that would ditch the current postseason bowl season for the best teams in the country and replace it with a four-team playoff.  While many had been clamoring for an eight- or sixteen-team playoff, the four-team playoff was certainly an improvement over the previous system that had no playoff at all (just ask the teams from Oregon in 2001, USC in 2003, Auburn in 2004, and Cincinnati in 2009, among others).

Yesterday, those same powers-that-be unveiled the name for the new college football playoff: College Football Playoff (you can vote for one of the logos to the right here).  I can only assume that the powers-that-be called up a geriatric and hard-of-hearing Don Draper, tried to explain to him what they wanted, and found him shouting “college football playoff” into the phone over and over as he tried to figure out if they were saying “college football playoff” or “cauliflower pilaf.”  Turning to each other, they said things like “the old bear’s still got it” and “pure genius” before hanging up, calling up the trademark office, and getting trademark protection for “College Football Playoff” on March 28.

I seem to recall that lots of advertisers refer to the Super Bowl as the “Big Game” and “the Football Championship” when they haven’t received approval from the NFL to use the term “Super Bowl.”  I’m assuming that “College Football Playoff” would have been one of the go-to options had another term been chosen, so I’m curious to see what advertisers will use as this goes forward.  Maybe “The Not Quite Professionals Mini-Tournament to Determine Who Gets the Trophy” or “The Way to Pick a College Football Champion That is Better than the Old Way”?  Maybe I’ll stick to my day job.

–Dan Kelly, Attorney

College sports aficionados are likely familiar with the Big Ten Conference.  Beginning in 1912, there were ten schools in the Big Ten.  From 1949 through 1990, those ten schools were Illinois, Indiana, Iowa, Michigan, Michigan State, Minnesota, Northwestern, Ohio State, Purdue, and Wisconsin.  (Michigan State replaced Chicago in 1949.)  In 1990, Penn State joined the conference, and no schools left, meaning that the Big Ten had eleven schools.  The Big Ten chose not to rename itself, but it did come up with a clever new logo:

In case you missed it, look at the negative space surrounding the “T” in the logo–it forms the number 11.

According to the Big Ten Commissioner Jim Delaney, the Big Ten is currently studying the prospect of expanding its membership.  In theory, if the Big Ten had twelve or more schools, then the Big Ten could split into two divisions for football and hold a championship game between the winners of each division, much like is already done by the Atlantic Coast Conference (the ACC), the Big Twelve, and the Southeastern Conference (the SEC).  Mr. Delaney insists that the addition of a championship game for football is not the driving force behind the expansion study.

As may be expected, rumors are flying about which schools might be invited to apply for membership in the Big Ten, and when.  Missouri, Nebraska, Rutgers, and Pittsburgh have all been mentioned.  I am wondering what happens to the name and logo of the conference, should it expand.  Obviously, the name BIG TEN has survived, and probably thrived and increased goodwill, over the past twenty years that it has had eleven schools.  Even so, the name becomes increasingly irrelevant with the addition of more schools.  Even as a nod to history, what school would want to enter without a name change to the conference, instantly becoming a school that is inherently not suggested by the name of the conference.  (This has apparently not bothered Penn State, at least not in any way that is publicly evident.)  Rebranding is not cheap, and it carries some risks.  Further, the reach of rebranding would likely extend to the Big Ten Network, the Big Ten’s successful cable channel.

These are obviously not insurmountable hurdles, but I think the demise of BIG TEN as a well-known trademark in the collegiate domain is not far behind future expansion of the Big Ten Conference, if it comes to pass.  If so, it will be sad to see the loss of a good, strong, two-syllable trademark that has stood the test of time.