Fifth Circuit: University color schemes may be eligible for trademark protection

In Board of Supervisors for Louisiana State University v. Smack Apparel Co., the Fifth Circuit issued a decision that can have significant implications for sellers of merchandise bearing well-known university or sports team color schemes.

In the case, four universities (LSU, Oklahoma University, Ohio State University, the University of Southern California) and Collegiate Licensing Company sought to bar the defendant from printing shirts bearing the school’s colors along with slogans relating to the appearance of the schools’ teams in certain football games.  (Examples:  “Beat Oklahoma” on an LSU shirt; “Sweet as Sugar” for teams playing in the Sugar Bowl.) 

The Universities won on summary judgment at the District Court level, and Smack appealed.  The Fifth Circuit affirmed.  As the Court stated:

[T]eam colors and logos are, in the minds of the fans and other consumers, source indicators of team-related apparel.  By associating the color and other indicia with the university, the fans perceive the university as the source or sponsor of the goods because they want to associate with that source.

The universities did not claim rights to all use of the school colors.  Instead, the universities only claimed rights in the colors when used in connection with other indicia identifying the schools, such as upcoming team opponents, high-profile events, geographic indicia, or titles and honors bestowed on the team. 

The Court’s decision stated that all parties agreed that a color scheme can be protected as a trademark if it satisfies two criteria:  (1) the color scheme must have acquired secondary meaning, and (2) the color scheme must be non-functional.

In addition, the court noted that other business in a school’s town may use the university colors, but that use was different than (and did not void the secondary meaning of) use of the colors on merchandise typically produced by the university: 

The key is whether the third-party use diminishes in the public’s mind the association of the mark with the plaintiff – surely lacking where colors are shown on a store wall.

The court also considered other factors, such as intent of the defendant, relevant to its finding.

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