Ah, autumn on a college campus…students returning from wherever their summers took them, leaves falling on the Quad, tailgating Saturday afternoons before the football game.
This year, the waning days of summer also brought trademark lawsuits. In August, Baylor University sued Boston University over the New England institution’s allegedly infringing use of the initials BU. According to the complaint filed in the U.S. District Court for the Western District of Texas, Boston University’s use of interlocking “BU” initials infringes Baylor’s rights in a similar design.
A few weeks earlier, in late July, Columbia Sportswear sued Columbia University in the federal District of Oregon. Columbia’s suit alleged that the university’s sales of apparel bearing the word COLUMBIA alone – without “University” or CU logos – infringes Columbia Sportswear’s trademark rights.
One theme in both lawsuits is that the parties had agreements in place governing how they can use their marks, including abbreviations.
While maybe not as common on college campuses as libraries and disconcerting mascots, coexistence agreements play an important role in helping to differentiate schools with similar initials, color schemes, logos, and other branding. Think of the Ohio State University v. Oklahoma State University, which reportedly settled a dispute in 2017 over how the respective schools would use OSU. (To our knowledge, though, Ohio State is the only university that can lay claim to THE as a trademark.)
Coexistence agreements include terms defining how the parties will use their marks – such as with a certain design or other wording – the products or services they will use them with, and any geographic limitations to distinguish one party’s mark from another’s. For example, the Columbia complaint claims that the sportswear company and the university agreed in 2023 that Columbia University could use and register COLUMBIA “on condition that any use and registration of COLUMBIA is only in conjunction with at least one other indicia of the University such as its SHIELD, its CROWN, its C design, or a representation of its LION MASCOT.” The use at issue in the lawsuit was arguably outside of this.
A challenge with such agreements is that brands need to stick to them. That sounds simple enough, but turnover in personnel, rebranding and updating brands, and new market realities can complicate matters, especially when a company – or university – has multiple agreements to track and comply with over time.
For instance, Apple Computers and Apple Records agreed to terms that would keep what was then a fledgling tech company out of the way of the recording company founded by the Beatles. The parties had to revisit their agreement as the line between music and tech increasingly blurred and when the tech company moved into the music and entertainment business.
In higher education, geographic distance once kept institutions like Boston and Baylor out of each other’s territory. Today, with factors like the merging of conferences and student-athletes monetizing their NIL (name, image, and likeness) rights on social media, geography may no longer be the differentiator it once was.
Both complaints alleged that the defendants at some point began using their marks in ways other than what the parties agreed upon. Many coexistence agreements include provisions for the parties to deal with this and avoid confusion, such as with a requirement for the parties to discuss the potential infraction before filing suit. However, it is also important for trademark owners to enforce its rights if it does not appear that a resolution will be reached.
This fall, as you sip your pumpkin spiced latte (or PSL®, to be more specific), remember that working with counsel to manage coexistence agreements and monitor the market can help brand owners maintain and strengthen their rights, and get an A+ in trademarks.
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Markery Law is a boutique trademark law firm helping entrepreneurs and high-growth companies strategically build and protect their brands, secure their trademark rights, ensure enforceability across jurisdictions, and increase value by focusing on business practical solutions and client focused services.
Please reach out to a Markery Law attorney if you’d like assistance with agreement management or monitoring the marketplace.