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Monday, 3 March 2014

US college slogans, freedom of speech and limping marks

From one of our dearest and most kat-patted friends, the excellent Chris Torrero, comes a link to "Colleges Need Free Speech More Than Trademarks", a fascinating little article by Jacob H. Rooksby (assistant professor,School of Law, Duquesne University) which recently appeared on the website of the (US) Chronicle of Higher Education, here. According to the author,

Most of Cedric's "first
year experience" was
having to write essays
"... Trademarks in higher education encompass institutional names, logos, and insignias, the iconography that fans love to see featured on all kinds of merchandise. Institutions license their marks on these products, often relying on third parties to broker deals that can produce significant royalties. This $4.6-billion industry appears to be good for colleges, which exploit the revenue channel to make up for losses elsewhere in their operations. The problem is that with success comes temptation. Colleges increasingly seek trademark protection for marks that go beyond their names and athletics insignia to cover fundamental aspects of their education and research programs as well. Some of these marks, and the exclusive rights they represent, threaten to undermine the public-serving soul of nonprofit higher education.

Take the common practice of advertising the "first-year experience" at an institution. Student-affairs professionals beware: The University of South Carolina has a federal trademark registration for that term as used in relation to educational services. Does your business school offer a "fast-track MBA"? Eastern University, in Pennsylvania, lays claim to that phrase, again for uses in connection with educational services".
After citing further examples -- "be the difference" (Marquette University), "cure violence" (University of Illinois, for "promoting public awareness of violence as a public health epidemic"), "student life" (Washington University, St. Louis), "students with diabetes" (University of South Florida), "one course at a time" (Cornell College), "touched by a nurse" (University of Colorado), "we’re conquering cancer" (University of Texas), "working toward a world without cancer" (University of Kansas Hospital), and "imagination beyond measure" (University of Virginia) -- the author comments:
"Registrations and rights-claiming of this sort are unwarranted in higher education. Trademarks are meant to be vehicles for reducing consumer confusion, not rewards for brand-building. Because trademark registrations signify rights to commercial uses of words, rights holders and the public often mistakenly think they confer ownership of words themselves. This misperception tends to promote risk aversion and stifle otherwise fair expression.  ...

Little is to be gained from this growing commodification of language, despite the mostly vain hope that locking up terms that describe academic programs and research initiatives will lead to additional revenue. Most trademarks that go beyond the simple protection of institutional names, logos, and insignias present poor licensing opportunities, if any. ...

Yes, colleges have a responsibility to protect their assets, but their trademark portfolios should not be built as stockpiles that inhibit free speech. We should reject a world where curricular features and research goals are marked like menu items at a chain restaurant. ..."
Bravo, says this Kat!  And if universities take the lead in responsible brand-building, perhaps they will set a good example for other commercial sectors in which goods and services are supplied under the limp banner of pathetic slogans that may mean a lot to their owners but which are rarely if ever considered to be brands or origin identifiers by the public at large.

Merpel agrees: she recalls the admirable expression "limping trade marks", coined by Jacob J (as he then was) in Philips Electonics NV v Remington Consumer Products [1998] ETMR 124.  A limping trade mark is a mark that is never used by itself and which gains support from the "crutch" of another, far stronger trade mark. Are terms such as "be the difference" or "student life" ever used by themselves, or even capable of being so used? If not, they are limping marks and it's time to give them the push.  Though the Court of Appeal (at [1999] ETMR 835) didn't like the use of the expression "limping mark", there is no better way of describing them. In truth, they serve no purpose in the real world and should never be granted or enforced.

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