Wednesday, January 20, 2010

CAFC Favors USC Trojans Over USC Gamecocks in "SC" Logo Fracas

In a non-precedential ruling, the CAFC affirmed the TTAB's decision in University of Southern California v. The University of South Carolina, Opposition No. 91125615 (August 1, 2008) [not precedential]. [TTABlogged here]. At the Board level, the Trojans of USC (California) topped the Gamecocks of USC (South Carolina) in a Section 2(d) opposition proceeding involving their respective SC logos. The Board had also dismissed South Carolina's Section 2(a) counterclaim for lack of standing. The University of South Carolina v. University of Southern California, Appeal No. 2009-1064 (Fed. Cir. January 19, 2010) [not precedential].

South Carolina logo

Carolina sought registration of the logo mark shown above for "clothing, namely, hats, baseball uniforms, T-shirts, and shorts." California relied on two registrations, one for the standard-character SC mark for various goods, including clothing, and the other for the logo shown on the left immediately below for various goods, also including clothing. It also relied on common law rights in the logo shown on the right immediately below.

Section 2(d) Opposition: South Carolina attempted to limit Southern Cal's channels of trade to "university controlled" outlets, but the court agreed with the TTAB that the term "university authorized" was broader and encompassed the same trade channels as those for South Carolina's goods.

As to the sophistication of purchasers, the court agreed with South Carolina that evidence was lacking for the Board's findings regarding sophistication of purchasers, but it ruled that this error was harmless, since the marks are "legally identical and would appear on the same classes of goods in the same channels of trade."

And the court agreed with the Board that the lack of actual confusion was insignificant in light of the lack of evidence that "the two marks appeared together for a significant length of time."

Section 2(a) counterclaim: [The Board had separately granted summary judgment dismissing this counterclaim in 2003]. The court found that South Carolina had standing to bring this counterclaim, which was based on an alleged false association with the State of South Carolina. However, in light of the evidence that other colleges and universities represent themselves as "SC," it agreed that South Carolina had failed to present a genuine issue of material fact regarding whether the initials "SC" uniquely point to the State of South Carolina.

TTABlog comment: An mp3 of the oral argument may be found here.

Text Copyright John L. Welch 2010.


At 6:52 AM, Anonymous Rob said...

Thanks for the post.

I think you may want to add a post-script on the Court's discussion of the issue of standing. The court clearly says that you do not even need to be an agent of the mark owner in order to have standing and bring an action under sec. 2(a). This goes against everything the Board had said or done over the years.

I have yet to see a recent case in which the Court affirmed a Board's dismissal for lack of standing.

At 7:45 AM, Blogger John L. Welch said...

You can find a few cases on this blog where standing was not found, but those cases are few and far between.

As to your other point, it does seem odd that a party can raise a 2(a) claim based on false association with someone else. But apparently a competitor can raise any basis for refusal (e.g., surname significance even though the party doesn't have or use that surname). This is off the top of my head, and I haven't researched the issue.


Post a Comment

<< Home