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.

I’m not talking about those kinds of four letter words (by the way, we’re still awaiting the Brunetti decision to learn their fate), so today I’m talking about this wholesome kind:

Inquiring minds may wonder (and interested alumni) how the University of Iowa might go about owning federally-registered rights in the word IOWA to convert that ™ symbol to an ® symbol?

The easiest place to start would be to claim the word has acquired distinctiveness for the typical clothing offerings of a Big Ten University athletic program in combination with the distinctive color combination, gold on black:

 

 

And, black on gold:

But, what about the word only, without being limited by font or the distinctive color combination?

No problem. Judging from another four letter truncation of a University name, it’s doable with a showing of acquired distinctiveness too.

And some may be surprised to know this remains true, even when the truncation constitutes the complete name of a State.

Go ahead and ask Indiana, Michigan, Illinois, Wisconsin, and Nebraska, to name just a few.

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!

 

The big mascot news over the past year has been in the NFL, as Washington fights to maintain its registrations for the REDSKINS mark. As that dispute continues, the University of North Dakota tried to put to rest its longstanding issues regarding its previous use of the name “The Fighting Sioux.”

In 2012, UND dropped the old nickname. It was a long drawn-out battle between the NCAA, university administration, the North Dakota legislature, and others. In the end, it took a statewide referendum to enable the school to drop the name. But the issue wasn’t exactly resolved as UND never adopted a new nickname. Instead, they were simply “North Dakota,” or for those unable to not personify a school in the form of a nickname, “The North Dakota.” The name doesn’t exactly lend itself to a great mascot costume:

Possible Mascot - UNDNotwithstanding the aesthetic disadvantages, the mascot would be particularly susceptible to gusts of wind, which could present an issue on the plains of North Dakota.

Also, while “North Dakota” was going through its naming process, its intrastate rival North Dakota State University was getting its fair share of publicity. After all, all NDSU did was win back to back to back to back FCS titles (with a #3 seed in this year’s playoffs). I imagine it must have been a bit irritating to continue to correct sportscasters and members of the public that UND was the other North Dakota, not the one with all of those national titles.

In order to fix the problem, the school held a vote to determine the new nickname. Among the choices were Nodaks, Roughriders, Sundogs, Fighting Hawks, and the North Stars. Apparently the Frackers didn’t make the list. Votes were cast and, just last week, UND announced that the winning nickname was “The Fighting Hawks.” But did UND simply trade one controversial name for another?

I may be biased, but when I hear “The Fighting Hawks,” I can’t help but think of my alma mater of the University of Iowa and its Hawkeyes. Although the name is officially the “Hawkeyes,” we all know that when someone says “hawks,” they’re talking about the Iowa Hawkeyes. Among Iowa fans, “Go Hawks” isn’t just a cheer. It’s a greeting. See a friend on the street but don’t have time to say hello? A quick “Go Hawks!” does the trick just fine. In fact, it doesn’t even have to be a friend. If an Iowa fan sees an unknown stranger anywhere in the U.S. or around the world with a Hawkeye hat or shirt, there is a 95% chance that a “Go Hawks!” will be exchanged.

Okay, sure, there are other Hawks out there too. On the pro side there are Atlanta Hawks and the Chicago Blackhawks. In college, there are probably too many to name, including the Dickinson State University Blue Hawks, also located in North Dakota. However the timing certainly is suspicious. After all, the Iowa Hawkeyes have gone undefeated in football this year and are currently slated to be one of the four teams in the College Football Playoff (FYI: in addition to typing, I am also presently knocking on wood and throwing salt over my shoulder). And did I mention that Iowa just set the record for attendance at a wrestling meet, while knocking off the top ranked team in the country? Or that the Hawks are also on the cover of Sports Illustrated. Sure, it’s only a regional  cover, but do you know what state is included in that region? North Dakota.

Look UND, I can see why you would like to ride the coattails of Iowa’s popularity and success. You’re not the only one, either. The University of Southern Mississippi tried to capitalize on the iconic Iowa Hawkeye tiger hawk logo. It even led to an opposition at the Trademark Trial and Appeal Board (If you’re curious, Iowa is undefeated there, too). Heck, the fame of the Iowa Hawkeyes extends beyond the shores of the U.S.: even international pop groups use the Hawks to improve their image.

Perhaps though, in the spirit of the holidays, we can let this one slide. So for now, Happy Thanksgiving – and Go Hawks!

On a recent pilgrimage to my home town to visit the University of Iowa and to see the Hawkeyes play football again in hallowed Kinnick Stadium, I discovered that a rather rudimentary and perhaps impolite (or potty mouth), yet passionate (sorry Nancy) branding technique, is alive and kicking in Iowa City. I also learned what now appears to go hand-in-hand (or, perhaps leg-in-hands as opposed to a single hand) with Hawkeye football games, at least those played on their home turf:

Somehow the static sign doesn’t do justice to the in-person-experience, so try the YouTube video.

Once again, I’m reminded of Anthony Shore’s succinct naming insight:

There was a time when a simple, honest name was good enough.

Anthony, it appears those times are alive and well (or at least kicking) in the middle of the heartland.

Having said that, I’m also reminded of Liz Goodgold’s caution over "Potty Mouth Marketing: Six Reasons Why Vulgar Language is the Curse of Your Brand".

Trademark Office insights below the jump.

Continue Reading Primitive & Impolite, But Non-Vulgar Trademark & Naming Technique?

Mark Image

To sports fans of this university, December has been a big month because their beloved team finished the 2009 regular football season undefeated (13-0) once again, winning yet another post-season BCS bowl game bid. Next month will be even bigger news if their WAC team happens to defeat TCU in the Tostitos Fiesta Bowl. To trademark types, however, the biggest news of all is what this university was able to accomplish last month at the U.S. Patent and Trademark Office.

You might be surprised to learn (I was) that the above image is the drawing associated with the single color trademark ("the mark consists of the color blue used on the artificial turf in the stadium") that this university was able to federally register in connection with: "Entertainment services, namely, the presentation of intercollegiate sporting events and sports exhibitions rendered in a stadium, and through the media of radio and television broadcasts and the global communications network." Hat tip to Brad Frazer of the Hawley Troxell firm, in Boise, Idaho.

Quick question, how does one render entertainment services in connection with a single-color trademark through the "media of radio broadcasts"? Does oral reference to the blue turf on the radio constitute use of the mark in commerce?

In any event, the identity of the university in question, is revealed below the jump, and it is, of course:

Continue Reading Surface Level Branding Runs Deep on This Athletic Field