CLEMSON 22, ALABAMA 2: It’s not a Prediction – it’s a Fact!
It’s that time of year when college football fans are at their best, or their worst. Next week, Clemson and Alabama will go head to head in the BCS championship game in Glendale, Arizona. I don’t have a dog in the fight (I met my wife in Ann Arbor on the campus of the University of Michigan), but I have long been fascinated by the world of sports trademark licensing, and collegiate sports trademark licensing in particular. The numbers above are the latest rankings of Clemson and Alabama in terms of trademark licensing revenue.
Clemson University, according to its website, “has registered 19 different marks, including the word “Clemson,” with the U.S. Patent and Trademark Office. Any mark that is intended to represent Clemson University is the property of the University.” Clemson is registered as a trademark for a variety of merchandising items such as pens, decals, backpacks, stadium cushions, mugs, towels, shorts, and the like. Not all university trademarks are connected to sports. Clemson University is registered as a trademark for cheese.
Clemson’s trademark licensing and Alabama’s trademark licensing are handled through the Collegiate Licensing Company (“CLC”), a division of IMG College which is a division of IMG Worldwide. CLC represents almost 200 universities. Some schools, Ohio State, Oregon, and USC for example, run their own trademark licensing programs in-house, and revenue figures are more difficult to come by. Not that I care, but can there be any doubt that Brutus Buckeye is doing just fine, thank you?
The University of Texas won’t be represented at the BCS Championship game, but pity not the Longhorns. For several years, Texas has been the leader of all schools represented by CLC in trademark licensing revenue.
(The University of Michigan is number 3 on the CLC revenue list and Purdue, alas, is ranked 37th.)
The annual retail sales of college licensed merchandise in 2013 were estimated to be $4.59 billion. Collegiate trademark license fees are usually stated as a royalty percentage, and 8% is typical. Royalties for Championship gear can run as high as 15%. Recently, sales of collegiate branded merchandise topped sales of NFL branded merchandise, MLB branded merchandise, and NASCAR branded merchandise.
Alabama is in the middle of a trademark battle for the ages. Does anyone remember Paul “Bear” Bryant and his inimitable fashion sense? College football coaches just don’t wear suits and ties anymore. Did any other coach wear a houndstooth fedora on the sidelines?
Alabama took great umbrage when a Georgia company applied to the Patent and Trademark Office to register Houndstooth Mafia for shirts and hats.
Alabama, and Bear Bryant’s son, on behalf of his estate, claimed that, based on their longstanding and extensive use of a houndstooth pattern, it “has come to identify Coach Bryant and the University’s goods and educational and athletic services.” Alabama and Bear Bryant’s Estate (“Opposers”) filed a formal opposition to the Georgia’s company application and gave the Trademark Trial and Appeal Board great fodder for a well reasoned and entertaining precedential decision in which it dismissed the Opposer’s opposition. For example: “For Opposers to prevail on their section 2(d) claim, we must find that during his life, Coach Bryant owned protectable common law trademark rights in the Houndstooth Pattern, that these rights were acquired by his estate, and that Coach Bryant, during his lifetime, or later Bryant’s estate, licensed their trademark rights in the Houndstooth Pattern to the University. When reviewing these requirements in connection with the evidence, it is clear that Opposers have fumbled… In conclusion, opposers’ evidence does not get it into the end zone by proving it has trademark rights in the alleged Houndstooth Pattern mark.”
The dispute did not end with the Board’s decision. Alabama negotiated a settlement with the Georgia company and they went off to federal court to file an action, and told Judge Richard J. Proctor:
- The parties acknowledge and agree that the appeal board’s order granting the trademark to Houndstooth Mafia should be vacated.
- The Georgia company signed over to the University all rights, title, and interest in and to the “Houndstooth Mafia” trademark.
- The application for a trademark for the “Houndstooth Mafia” design will now be registered with the University of Alabama as its owner.
- Houndstooth Mafia Enterprises and the University are bearing their own costs and attorney’s fees.
Judge Proctor said “Okay” and issued an order which, among other things, vacated the Trademark Trial and Appeal Board precedential ruling. Uh oh. Last June, the Board refused to vacate its opinion that houndstooth is a known fabric pattern available to the general public and the university holds no special claims to it. This seemed to irk Judge Proctor who is quoted as saying “I’m not sure I’m required to explain myself to an administrative agency,” Later, he said that he’s not sure the board is entitled to be up in Washington D.C. “saying ‘nanny nanny boo boo’ to me.” (The Board actually sits in Virginia).
Insanity? You be the judge. Linsanity? That’s what ensued when Jeremy Lin, a basketball phenom in 2011 with the New York Knicks tried to secure trademark rights in the term Linsanity. (In 2012, Lin’s Knicks jersey was the No. 2 seller in the NBA behind the Chicago Bulls’ Derrick Rose.) In 2012, eleven applications were filed to register Linsanity as a trademark for everything from hats to cologne. One was filed by Lin himself. Another one was filed by Andrew Slayton, a high school basketball coach in Palo Alto who is considered to be most likely the person that coined the term in July 2010 when he registered the domain “linsanity.com” where he sold T-shirts bearing the LINSANITY mark. Despite the facts that (1) Jeremy Lin did not create the LINSANITY mark, (2) he was not the first to register it with the USPTO, and (3) he was not the first to use LINSANITY as a trademark in interstate commerce, his is the only application remaining at the Patent and Trademark Office. In that case, Lin’s publicity rights trumped all, but that’s a story for another trademark tidbit.