Question

4. The Athletic Department at State University has created numerous logos and designs foruse in their merchandising program. For each logo and design, State University Athletics has sought and received federal trademark registration. The athletic department has recently hired you as a new assistant athletic director to oversee the merchandising program and to develop a licensing program for State University Athletics marks and logos. Upon your arrival, the new merchandising and licensing athletic director discovers that dozens of local businesses, charitable organizations, and schools are using the mark and logos throughout the state. First, assuming such use is unauthorized, what must State University show in order to prevail if it decided to pursue trademark infringement actions against these users, and how would such showing be made? Second, assuming your boss would want to file a lawsuit only as a last resort, what steps would you recommend to curb this unauthorized use?

Answer 1

If the University has to pursue Trademark infringement actions against these users then they have to prove that The trademark are being used in actual business conditions where other organisations are using the trademark to take separate and unfair advantage of the brand image of the specific University. Implementation and getting evidence from the real market environment would be the most appropriate way of filing a lawsuit against these companies.

For mitigation of the problem at an early state rather than filing lawsuit I would try to contact the specific forms and remind them about trademark being registered to University. If the business is still uses The trademark then I would try to use alternative dispute resolution process which would be the last step if they did not agree to remove the specific Trademark from operation. At the last step I would file a lawsuit if the other organisations does not agree on any of the above listed conditions.