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I believe That We Should Learn From USU

July 22, 2014 Blogs

I’m making some observations on Utah state university’s (USU) trademark issue with San Diego State University (SDSU). In case you’ve missed it, you can catch national, state, and local news here, here, here, and here. Maybe most importantly, the actual chant thingy is here. (Turn your speakers up!)

Basically, the universities are posturing over who will control the rights to the phrase “I believe that we will win!” on merchandise like athletic apparel. SDSU is in the clear lead with a ripened federal trademark application. On the other hand, usu has a lesser trademark registration with the state of Utah.

In commenting I’ll acknowledge upfront that there may be more to this story than is in the papers and that I may be unfairly armchair quarterbacking. I should also say that I’m avoiding the academic topic of whether a phrase like this should be protectable in the first place. I’m more concerned about the fundamentals of establishing market position.

Observation #1: don’t underestimate your competition. Assuming correct reporting, usu was “surprised” that someone else would try to protect the phrase through federal trademark application. Not good. As a general rule, it should not come as a surprise that competitors (heck, even regular folks!) want to outpace you. Things are no different with respect to trademark rights. Don’t underestimate your competition.

Observation #2: don’t unnecessarily limit yourself. Referring to the situation, one usu spokesperson states their strategic planning was guided by the thinking that “[w]e didn’t need the entire country, just the closest geographic base.” Another states that “we did not want to prevent others from using [the trademark].” I totally disagree. You should never limit (let alone announce limiting) the market potential for your product and branding. Aim high and protect accordingly. Significantly, less ambitious state (as opposed to federal) trademark registration has extremely limited effectiveness. Moreover, perfecting trademark rights through federal application and registration does not prevent you from letting others use your trademark if that is what you want. To the contrary, federal registration and subsequent licensing enable you to protect and control other users. Here, USU seems to have disregarded its potential licensees.

Observation #3: Believe in preventative medicine first. When it comes to trademark protection, early effort pays huge dividends. In particular, filing for and acquiring a federal trademark registration can cost under $2,000. In contrast, reacting to a problem and having to oppose someone else’s federal trademark application can cost tens, and in rare cases, hundreds of thousands of dollars. Here, usu may still be able to avoid a protracted and costly opposition by entering into coexistence negotiations with SDSU. But, usu’s bargaining position is relatively weak, for the reasons set out in observation #2 above.

I’m an aggie and a believer. So, I’m hopeful that a miracle may actually come from usu’s faith (the herald journal’s article is titled: “usu believes that it will win right to keep using stadium chant on merchandise.”) In the meantime, these types of examples highlight avoidable problems that I wouldn’t wish my clients to experience.