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The University of South Carolina v University of Southern California

Name:The University of South Carolina v. University of Southern California

Cite:Univ. of S. Carolina v. Univ. of S. California, 367 F. App'x. 129 (Fed. Cir. 2010) cert. denied, 131 S. Ct. 387 (U.S. 2010)


Court:__United States Court of Appeals for the Federal Circuit

Procedural Posture:__The University of South Carolina appealed from a final decision of the Trademark Trial and Appeals Board refusing registration of its Baseball Logo mark and granting summary judgment on its counterclaim for cancellation of a trademark registration held by the University of Southern California.

Background and Description:__University of Southern California and The University of South Carolina, often find themselves competing on the field of play in various collegiate sports, however, here they were competing over the right to use an interlocking "SC" mark to represent their University teams. South Carolina sought to register their "SC" mark for use on clothing, namely, hats, baseball uniforms, T-shirts and shorts, a registration which was opposed by University of Southern California. Southern California had registered its own "SC" marks, both a standard character mark and athletic interlock mark, which it claimed had priority of South Carolina's marks which Southern California proposed would cause a likelihood of confusion. The Board agreed with Southern California and thus refused registration for South Carolina.

The board used the DuPont? factors for determining whether there would be a likelihood of confusion. While South Carolina does not appeal the Board's findings that the marks were legally identical, and would appear on the same classes of goods, they appeal based on the Board's decision with relation to the third, fourth and eighth factors.

Third Factor: Channels of Trade

The Southern California Registration is limited to trade channels that are either "university controlled" or "university authorized". On appeal, South Carolina argued that because of these limitations, the two marks would not appear in the same channels of trade. The Court, however, found that while "university controlled" channels might not include the same channels of trade, "university authorized", taken for its plain meaning, would create channels of trade in which both marks would appear.

Fourth Factor: Conditions of Purchase

South Carolina took exception to the classes of potential consumers which the Board considered "less sophisticated and exercise less care". The Board found that given the inexpensive nature of the goods, at least two classes "new or casual fans" and "consumers purchasing the goods as gifts" would be susceptible to confusing the two schools' marks. The court agreed in part with South Carolina, in that the Board erred in its finding that certain consumers were unsophisticated, but determined this factor would not be enough to reverse a finding of likelihood of confusion.

Eighth Factor: Absence of Evidence of Actual Confusion

The Board had determined that there had not been "any significant opportunity for actual confusion to occur". While South Carolina presented some evidence that there had been opportunity, and further an absence of evidence of actual confusion, the Court was persuaded by the Board's determination after given the evidence, that it was insignificant.

Standing and Cancellation:

South Carolina also appealed the dismissal of its counterclaim for cancellation of Southern California's mark. While the Court determined that South Carolina might not have lacked standing, it ultimately concluded that because "SC" could refer to a number of different entities, other than the state of South Carolina, it was not unmistakably associated.

Impact:

Given the overall growth in the economic structure of college sports, while this holding is a win for Southern California, it is a bigger loss for South Carolina and other similarly situated schools. The style of interlocking letters is ideal for certain apparel items, namely hats. By example, 27 of 30 teams in MLB use a letter(s) from their team name or geographic location as their official hat design. Interestingly, two teams use the same letter, and the Mets and Yankees both use an interlocking "NY" which is arguably not more distinct than the marks involved in this case.

In response to this holding, South Carolina has been forced to move to two different logos, one a "C" with a gamecock (their team name) inside and the other an interlocking USC, though neither of them are as visually appealing as the interlocking "SC" .


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