In April 2015, the Glenview (Ill.) Park District filed a complaint with the United States Patent and Trademark Office claiming the National Collegiate Athletic Association had violated its official trademark. In particular, the Glenview Park District claimed that the NCAA's marketing phrase "Experience It Live" was too similar to the phrase "Experience It" used by Glenview since 2008 in promotional materials. Glenview received formal registration of the mark Feb. 15, 2011.
In 2014, the NCAA began using the phrase "Experience It Live" and sought to register it, but the request was rejected due to its similarity to Glenview's trademark. Despite acknowledging that usage of the phrase would likely cause confusion with the park district, the Patent and Trademark Office allowed the NCAA to use the trademark unless someone opposed it — as the Glenview Park District did shortly thereafter, filing a notice of opposition with the Trademark Trial and Appeal Board.
This was an important step because if Glenview, as the trademark owner, had failed to file its opposition in a timely manner, the doctrine of laches could have prevented the district from recovering any damages it may have suffered as a result of the NCAA's use of the trademark, especially if it would have been prejudicial to the NCAA.
TRADEMARK LAW
According to the Federal Trademark Act of 1946, also known as the Lanham Act, a trademark is any word, name, symbol or device — or any combination thereof — adopted or used by some entity to identify its goods and distinguish them from those manufactured or sold by others.
There are generally two basic goals of federal trademark law. The first is to protect manufacturers and service providers — the trademark owners — from other manufacturers or service providers using similar marks to sell their goods. For example, if I can use a mark similar to Nike's to sell sporting goods, consumers might be confused by my mark and purchase my products instead of Nike's. This clearly would impact Nike's sales and business.
The second goal is to protect consumers by preventing other companies from using the mark in a way that will cause consumer confusion. Using the Nike example, if as a consumer I went to the sporting goods store to buy a new pair of Nike shoes and mistakenly purchased an inferior brand because of the similarities in the trademarks, I would suffer an economic injury.
There is no question over ownership of the mark, as Glenview formally registered "Experience It" with the Federal Patent and Trademark Office in 2011. To gain ownership rights in a trademark, it is not necessary to file a registration with the trademark office. All that is needed is that the trademark owner be the first to use the mark and then use it continuously thereafter. Trademarks can be lost if the trademark owner does not regularly use the mark.
While not necessary, there are a number of benefits with registering the trademark with the federal trademark office. First, with federal registration, the trademark owner's rights extend throughout the entire United States. Second, federal registration also provides constructive notice to others that the registrant owns the trademark and can exclusively use the mark.
PREPARING THE BATTLE
So what does Glenview have to do to prove that the NCAA used or infringed upon its trademark? To establish a claim for trademark infringement under the Lanham Act, Glenview must establish the following two points: first, that it has a protectable property right in the trademark, and second, that the NCAA's use of a similar mark is likely to cause confusion or mistake or deceive consumers as to who is the true source of the mark. In determining potential confusion, the courts focus on the following factors:
- Strength of the mark
- Similarity between the marks
- Similarity between the products and marketing channels used to sell them
- Likelihood that the trademark owner will expand its use of the mark on future products
- Evidence of actual confusion
- Defendant's "good faith" intent in adopting the mark
- Quality of the defendant's product
- Sophistication of the consumers
In addition to cases in which the use of a similar mark causes confusion among consumers, trademark owners can also bring trademark cases under the theory of dilution to protect the distinctive quality and selling power of a trademark.
Going back to the Nike example, suppose that I wanted to start a construction company called Nike Construction. Since Nike is not in the construction business, no one should confuse my business with the athletic sportswear company from Oregon. However, under the Federal Trademark Dilution Act of 1995, which defines dilution as the lessening of the capacity of a famous mark to identify and distinguish goods or services regardless of either the presence or absence of competition between the parties, or a likelihood of confusion, mistake or deception, Nike would be able to prevent me from using the name and thus protect the value of its trademark.
FIGHT FOR YOUR RIGHTS
Since one of the most important assets an organization possesses is its name or trademark, it only makes sense that the Glenview Park District is so concerned about the NCAA's unauthorized use of its trademark. So what can be learned from the case?
First, the Glenview case shows why it is so important to file your trademark with the Federal Trademark Office. By filing its trademark with the trademark office, Glenview has established a strong legal right to the trademark, which will be difficult for the NCAA to overcome. Second, if anyone uses your trademark or a trademark that you believe is similar to yours, it is essential that the organization seek to prevent the use immediately. Allowing another organization to use your trademark not only dilutes the value of your trademark, but as the rightful owner, you have less protection the longer you let the other organization continuously use it.
Attorney John T. Wolohan (jwolohan@syr.edu) is a professor of sports law in the David B. Falk College of Sport and Human Dynamics at Syracuse University.
Attorney John T. Wolohan is a professor of sports law in the David B. Falk College of Sport and Human Dynamics at Syracuse University.
This article originally appeared in the September 2015 issue of Athletic Business with the title "Defending Your Territory"
