August 21, 2018

Registration of State Names as Trademarks

Collegiate licensing is a big deal these days. Lots of alumni and fans of college teams want to wear clothing bearing the marks of their alma mater or their favorite team. Colleges commonly register their critical trademarks and license others to produce goods bearing their marks. Sometimes they have to pursue infringers who sell those goods without permission. Clothing makers pay good money for the right to put college marks on their goods.

The whole system is based on the presumption that the college owns the marks. Without ownership, the college can't shut down infringers, because there is nothing to infringe. And without the threat of an infringement claim, sellers are not so inclined to pay royalties.

Ownership of the most basic mark, the name of the college, is a simple enough matter if your college has a unique name. But what if your college is the state university? Can you own the exclusive right to put the name of your state on t-shirts, sweatshirts, caps, and other merchandise?

Yes, you can, to a point. First, although people often question how anyone can "trademark" a common word, it happens all the time. APPLE is a common word that also used as a trademark, for example. Apple Inc. can't prevent others from using the word to identify fruit, but it can prevent others from using it to identify computers and smartphones. So the fact that people get to call the state by its name does not prevent a university from having exclusive rights to use the name of the state of which it is the flagship university in specific ways, as a trademark.

But there are hoops to be jumped through. To be valid, a trademark must be "distinctive," meaning that consumers recognize it as identifying a particular source of goods or services. One way for a mark to be distinctive is to have nothing to do with the products it is used with. That may be a made-up name, like KODAK, or a common word that is in no way descriptive of the products â back to APPLE computers.

Another way for a mark to be distinctive is for it to have been used for a long time, without substantial competing use, so that the public grows to associate the term with a particular source. Such a term can become a trademark even though it might have been descriptive to begin with. Many of that type of marks are surnames, such as KORBEL sparkling wine (U.S. Reg. No. 1125421), or names that try to convey some desirable quality of the goods, such as KWIK-KOPY for printing and copying services (U.S. Reg. No. 1115789). They can also be geographically descriptive terms, which is how state universities typically get characterized.

To register a term that appears on its face to be descriptive, you have to show that the term has acquired distinctiveness. That's hard to show, so the Patent and Trademark Office will usually accept proof of "substantially exclusive and continuous use" of the mark for at least five years before you're making your claim as a sufficient showing. Usually a brief declaration will do, but sometimes the PTO requires more. If you satisfy the PTO, you get your registration based on "acquired distinctiveness" â the idea being that the public has come to know that a product bearing that maybe-descriptive term is yours.

And that is how state universities typically register their state's name as a trademark. That's how Kansas did it (U.S. Reg. No. 2073857). That's how Oklahoma did it (U.S. Reg. No. 4294514).

Scruton Statenames Kansas
Scruton Statenames Oklahoma

From sea to shining sea; Washington (U.S. Reg. No. 1601006) to Georgia (U.S. Reg. No. 3031191), universities are claiming exclusive rights to use the name of their state on clothing based on acquired distinctiveness.

Scruton Statenames Washington
Scruton Statenames Georgia

And a lot of those flagship universities are putting up with other universities using that same state name on their sweatshirts â Washington State (U.S. Reg. No. 1307992) to Georgia Tech (U.S. Reg. No. 1291896). Why that works is a different story.


Kansas sweatshirt: Copr. 2016 Laura Gilchrist, available at here (used under Creative Commons BY 2.0 license, (cropped from original).

Oklahoma sweatshirt: Copr. 2006, Bobby Acree, available here, used under CC BY-NC 2.0 license (cropped from original).

Washington and Georgia shirts: specimen files from USPTO records (cropped).