4 thoughts on “Nothing like waiting 50 years to complain

  1. I typically devote a good chunk of a class period in Trademark Law to role-playing the dynamics of claims by colleges against high schools that copy the colleges’ trade dress in their football uniforms. Between Daniel Moore’s litigation with Alabama, and this claim by FSU claim, I could expand the exercise to two or three days. Brilliant!

  2. That’s a great link, Mark.

    Questions:

    First, it is really so clear that there is TM infringement in these cases? Answer separately in the case of college v. high school, and in the case of manufacturer (Chrysler) v. high school. Ignore spurious claims of “dilution,” and ignore the spurious argument that mark owners have some “duty” to pursue these claims. The likelihood that some downstream commercial defendant would successfully raise an abandonment argument is not approximately zero. It is absolutely zero. The likelihood that a downstream commercial defendant would be able to argue successfully that these marks have otherwise lost their distinctiveness is also absolutely zero. Good TM lawyers know this. Unfortunately, marketing departments, TM paralegals, and other branding bureaucrats do not.

    Second, don’t $1 “licensing” settlements, and statements that “Lake Mary High School” is a “Proud Partner of Chrysler” open up naked licensing problems?

  3. Mike –

    I agree that the arguments mark owners (or, more precisely, their lawyers) make about why they have to pursue these things are totally baseless. And I think the fact that they give these kinds of $1 licenses puts the lie to the idea that these are in some way harming the mark owners.

    But this isn’t about the legal merits. What these mark owners are doing is creating an environment in which people generally believe that every use had to be licensed. They can blame “the law” for making them do it, but in the process they can “educate” consumers about their rights. And though they don’t really care about these particular uses, it helps them in the later cases that they do care about because they have moved the needle in their favor in terms of consumer expectations. That’s why this is particularly pernicious.

Comments are closed.