Last week, I enjoyed the privilege of returning to Iowa City (where it all began) for Executive Leadership Board Meetings at the University of Iowa College of Pharmacy. Great meetings there!

During a stroll through downtown, I was reminded of Deadwood, a legendary Iowa City tavern, so I snapped a few photos, having long forgotten the creative tagline — Institute of Higher Learning:

Deadwood has special meaning in the trademark world. A federally-registered mark no longer in use and legally abandoned, is considered deadwood, making it ripe for and subject to cancellation.

We’ve written before — here and here — about the challenges of trademark deadwood that face brand owners, and we’ve also highlighted the USPTO’s proposed help on the way, here and here.

Yet, until there is perfect alignment between every federal registration and corresponding actual use, the problem of deadwood will remain, even if it is less frequently seen by brand owners.

What we haven’t discussed much before is how to guage whether a registration is deadwood. The most common approach is to have a routine, professional, factual investigation conducted.

Turns out though, even reputable, professional investigations that reasonably seem to point to non-use and abandonment are not perfect, nor are they a guarantee of all the relevant facts.

For example, years ago, we received a petition to cancel our client’s federal trademark registration on abandonment grounds. Petitioner’s counsel was overly-confident in the assertion of non-use.

The investigation even noted that the mark no longer appeared on our client’s product packaging and labeling. Sadly for the Petitioner though, the mark was still in use on point of sale materials.

As a result, the matter resolved very differently than expected for Petitioner. Our client ended up selling the registered mark and receiving a royalty free license back to continue using the mark.

Back to the Deadwood mark shown above, technically it is not deadwood at all, first, because it is not federally-registered, and second, it is very much in use, posing a very different kind of issue.

Undoubtedly there are unregistered rights in the Deadwood mark, and the owner could come out of the woodwork to oppose or cancel another’s registration even up to five years after issuance.

Given the uncertainty of when and if the owner of an earlier unregistered mark wakes up to the importance of federal registration, it is pretty risky to ignore these kinds of uses during clearance.

Finally, given the uncertain and imperfect nature of trademark investigations, it’s best to think ahead and have some alternative leverage in mind before chopping at wood assuming its dead.

It sure feels like fall already. Apart from the fifty degree walk with my dog this morning, we’re now entering the second week of college football. Regular readers might have noticed that our blog has a couple of Iowa Hawkeye fans among the writers (Exhibits 1, 2, and 3). This week Iowa takes on their in-state rival, the Iowa State Cyclones. Without a professional sports team in Iowa, the college teams are the big draws throughout the state. While the rest of the country probably couldn’t care less, the game is a pretty big deal to native Iowans. For that reason, the rivalry creates some strong (and often pointless) arguments. The most recent argument involves two competing slogans around the state’s ties to agriculture that, at least according to some fans, borders on trademark infringement.

Although I’m sure you came here for an Iowa history lesson, I’ll keep the background brief. Beginning in the late 1970s running into the mid-1980s, farmers began suffering significant economic problems. Oil prices and interest rates rose while export volume and prices for farm commodities fell. Farmers’ debt rose, with significant numbers of foreclosures. It was against this backdrop that Hayden Fry, then head coach of the Iowa Hawkeye football team created the slogan “America Needs Farmers” or ANF for short. The ANF logo was placed on the Hawkeye helmets (image below):

 

More than thirty years later, the logo still appears on Hawkeye helmets, as well as in pretty impressive card stunts on select game days:

 

Like all “awareness” promotions, the ANF program has its detractors. The program is run in partnership with the Iowa Farm Bureau, which assists in the sale of a wide variety of merchandise. A portion of all the proceeds goes to Iowa’s food banks.

Some Iowa State Cyclone fans feel that the awareness and food bank donations are insufficient support for farmers. As one of the world’s top agricultural schools, the fans felt that Iowa State does a lot more to help farmers than the University of Iowa. A few years ago this led to one fan site to create the phrase “Actually Helping Farmers,” or AHF. It seemed that not much came from the phrase, until earlier this summer when second-year head coach Matt Campbell latched onto the #AHF acronym in a tweet, raising the ire of an Iowa Hawkeye fan site. Even making the Des Moines television broadcast.

Some fans have suggested that the dispute may cross the line into trademark infringement. I’ll set aside the importance of deciding which school helps farmers more (spoiler: there is nothing important about doing that), but I couldn’t not leap at a chance to spend my blog post writing about trademarks and my alma matter.

While there are only so many letters in the alphabet (26, to be exact), acronym marks are still subject to trademark protection. So does the University of Iowa have a case? It isn’t clear what exactly Iowa State is using the AHF acronym for, if anything. The coach’s inclusion of AHF as a hashtag in a tweet is unlikely to be actionable. The acronym seems to have been used for primarily for merchandise like t-shirts. For our sake, let’s assume Iowa State were to begin using AHF in the same way: a sticker on its helmets, widespread merchandising on everything from tree ornaments to window blinds. Would that create a problem, are the acronyms sufficiently similar?

Acronym marks are not given the same level of protection is non-acronym, inherently distinctive terms. However a party can assert an acronym mark against a third-party for use of similar acronym, even if a letter is different (they can even win, too!). For example, courts have found that VDS was confusingly similar to VCDS, both for video duplication services; CSC was found confusingly similar to CCC, both for electric wiring components; and I.A.I. was found confusingly similar to ISI, both for printed publications in similar scientific fields. As one court reasoned, ” it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, or phrases, and that the difficulty of remembering such multiple-letter marks makes the likelihood of confusion between such marks, when similar, more probable.” Dere v. Inst. for Sci. Info., Inc., 420 F.2d 1068 (CCPA 1970).

As a result, the fact that ANF and AHF have different middle letters does not mean that there is no likelihood of confusion. The marks could, in fact, be confusingly similar depending upon the overall context in which they appear. But a lawsuit seems unlikely, as neither school likely wants to get dragged into a dispute over helping farmers. It’s not the best public relations event. Plus, we haven’t even touched on the possibility that Iowa State might prevail on an argument that the use of AHF is a parody. Although I haven’t considered the legal support for a parody claim, Iowa State has some experience in parody, having pretended to be a real football team for the last three decades.

Yet when the fourth quarter hits zero, I’d expect this debate to die down – until September 2018, that is.

Go Hawks!