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Monday, December 22, 2008
School Colors Reaffirmed as a Valid Trademark

Although many think of logos and designs are central to trademarks, the use of color schemes also are protectable under trademark law -- even if the color schemes are not registered with the Patent and Trademark Office. This was the ruling of the 7th Circuit in LSU v. Smack Apparel, 07-30580, which affirmed a summary judgment ruling of the trial court with respect to infringement.

The Universities -- Louisiana State, University of Oklahoma, Ohio State and the University of Southern California -- alleged that the defendants violated the Lanham Act and infringed their trademarks by selling t-shirts with the schools’ color schemes and other identifying indicia referencing the games of the schools’ football teams. After the district court granted summary judgment to the Universities, a jury trial as to damages was conducted, with the jury returning
a verdict favoring the plaintiffs for actual damages of over $10,500 and lost profits of $35,686. The district court also enjoined Smack from manufacturing, distributing, selling, or offering for sale any of the six t-shirt designs found to be infringing or any other similar designs.

The appeals court, not surprisingly, concluded that the colors, content, and context of
the offending t-shirts are likely to cause confusion because of their similarity to the use of the colors of the school -- which were used, in some cases for decades, dating back to the late 19th century. Because of this use and familiarity by fans, the marks acquired "secondary meaning" entitling them to protection under the Lanham Act. As the court noted: "[The] use of the color scheme marks and their prominent display on merchandise, in addition to the well-known nature of the colors as shorthand for the schools themselves and Smack’s intentional use of the colors and other references," prove that secondary meaning occurred. The opinion added "we think this conclusion is consistent with the importance generally placed on sports team logos and colors by the public." With that in mind, the court had an easy time showing the likelihood of confusion element for trademark infringement because of the similarity to the schools' color and the marketing of the merchandise to the same retailers which sold trademark goods of the respective schools.
An interesting argument made by Smack was that the color scheme was "functional" and therefore not protectable. It claimed that the Universities’ colors on the t-shirts are functional because "the shirts allow groups of people to bond and show support for a philosophy or goal; facilitate the expression of loyalty to the school and a determination of the loyalties of others; and identify the wearer as a fan and indicate the team the fan is supporting." The panel rejected this kind of aesthetic use as a form of functionality.

This basis for this ruling could be applied to professional sports teams if a color scheme can be shown to be identified with a team (e.g. green, white and yellow for the Packers). What surprised me, however, was that the schools did not register their colors. They are fortunate that under U.S. trademark law (as opposed to most of the rest of the world) registration is not a pre-requisite for protection. Common law use merits protection. I still wonder why the schools did not make register the colors. They be consider doing so in the near future.


Just a correction - it was a 5th Circuit Ruling (not 7th) on appeal from the Eastern District of Louisiana.

Thanks for the excellent blog.

Anonymous Anonymous -- 12/24/2008 9:50 AM  

One quick followup question here... don't know if you would know the answer.... I was approached to do a photo shoot for a client (in SoCal) that would show two 'fans' cheering - one in a maroon shirt and one in a 'gold' shirt. Obviously the intent is to infer these two are fans of USC without using either the name or trademarks of the school.

Would this be infringing based upon the ruling in this case?

Would selling these images as stock photography also be considered infringing?

Anonymous Anonymous -- 4/13/2009 11:31 PM  

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