Collegiate licensing has developed into a booming industry since the advent of such programs in the early- to mid-1980s. Colleges and universities learned that their names, logos, and designs, which are their “basic protectable items of commercial value that fans identify with, are some of their greatest assets.”
Many institutions of higher education have taken steps to protect their names and logos. First, many have registered, and are continuing to register, “domain names that are identical to, or confusingly similar to, their trademarks to minimize instances of trademark infringement.” They also have resorted to litigation, bringing claims for trademark infringement, trademark dilution, and unfair competition under the federal Lanham Act, numerous state statutes, and common law.
Let’s take the example of Harvard University’s. Harvard is used as a paradigm because, besides serving as a leader in academia and research, it is on the forefront of trademark protection on the Internet. It recently brought several lawsuits to safeguard its marks, and it also reworked its policies to strengthen its protective measures.
In the recent litigation between “President and Fellows of Harvard College v. Eschool, Inc.”
Harvard secured preliminary injunctive relief against Eschool. Harvard settled with Eschool, which already had changed its name from “notHarvard.com” to “Powered.com.” Eschool agreed to acknowledge that its prior use of “notHarvard.com” had diluted and infringed the “Harvard” mark. It also promised to transfer ownership of the name to Harvard. Finally, the start-up company consented to abandon the trademark applications it had filed with the USPTO regarding domain names that contained “Harvard.” The settlement did not award damages to the University, which ultimately had decided not to pursue such relief in the hopes that doing so would result in a swifter resolution of the conflict.
Organizations like AMERICAN NUT & CHOCOLATE, INC, SOP SERVICES INC, AMERICAN GRANBY, INC. registered the word Harvard under different International classes.
In Trustees of Columbia Univ. v. Axenfeld, the New York Supreme Court concluded that the defendants called their educational service “Columbia Educational Institute” to intentionally lead the public to believe that it was the same as, or affiliated with, Columbia University. Stating that the defendants could not adopt “the great name and standing among the educational institutions of the country” that Columbia had acquired, the court granted injunctive relief to the University.
The current federal status of this trademark filing under “Clothing” and “Electrical and Scientific Apparatus” is REGISTERED AND RENEWED.
Similarly, in Cornell Univ. v. Messing Bakeries, the New York Supreme Court, Appellate Division, upheld a finding that a baker who relied on a recipe developed by a Cornell University professor to make bread, which he later marketed as “Cornell Recipe Bread,” negatively impacted the University’s rights. The court ultimately ruled that the defendant could not use the name “Cornell” without permission from Cornell University.
Since Axenfeld and Messing Bakeries, the issue of colleges’ and universities’ rights in their marks has arisen in different contexts. Although specific holdings vary, the courts have consistently reaffirmed the basic principle established in those two landmark cases.
Oxford University is another classic example. The (informally Oxford University, or simply Oxford), located in the English city of Oxford, is the oldest surviving university in the English-speaking world and is regarded as one of the world’s leading academic institutions. Although the exact date of foundation remains unclear, there is evidence of teaching there as far back as the 11th century.
The word “Oxford” has also been registered under different categories like “Paper goods And Printed Material”, “Electrical and Scientific Apparatus” and many other categories by different organizations.
Although many institutions of higher learning do not enjoy a level of renown comparable to Harvard’s and Oxford, all schools rely on their names and marks as their major sources of revenue. No matter their academic tier or athletic conference and division, educational institutions devote much time and money toward constantly improving their reputation in everything from curricula to career services to college sports hence the need to fiercely protect their brands as well.