“Lions and Tigers and Bears,
Oh My!...Protecting Your School’s Mascot.”
ASBA School Law Seminar May 2, 2013
CODY KEES
ATTORNEY
MUNSON, ROWLETT, MOORE & BOONE
Cody Kees
mrmblaw.com
501-370-4633
Pop Quiz---Mascots Trivia
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Protecting Your School’s Mascot
 3 Forms of Intellectual Property Protection

Intellectual Property: Owners are granted certain
exclusive rights to a variety of intangible assets
(1) Trademarks
 (2) Copyrights
 (3) Patents

Trademark
 Any word, name, mark, symbol, or device used
to identify and distinguish the goods of a
person, company, school, etc.
Copyright
 A copyright protects works of authorship, such
as writings, music, and works of art that have
been tangibly expressed.
Photo: Will Counts
Encyclopedia of Arkansas History and Culture
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Patents
 Protects inventions
 Expensive process
 Grants the right to exclude others from using,
making, or offering for sale
 Gives the inventor a 20 year monopoly on the
product
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mrmblaw.com
501-370-4633
Pop Quiz—Patent Trivia
CNN.COM online poll—
What invention was voted
the greatest invention of all
time?
ASKMEN.com online poll—
What invention was voted
the greatest invention of
the last 100 years?
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mrmblaw.com
501-370-4633
Trademark Protection
 Protects your school’s image
 Protects others from disparaging your mark
 Ensures others do not profit from your mark
 It is all about BRANDING!!
 Last as long as the mark is used in commerce
 P.S. --- Any mark or logo is a Trademark, the question is
whether the Trademark actually has legal validity.
Cody Kees
mrmblaw.com
501-370-4633
Trademarks in Arkansas Schools
 Mascots
 Logos
 Mottos

Our Community, Our Commitment, Our Children-Waldron Schools
Soaring to Success! – Cutter Morning Star

Preparing Today’s Students for Tomorrow’s Opportunities- Watson Chapel

 Most Arkansas schools have trademarks, but
they are NOT registered trademarks, either
federally or by the state.
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mrmblaw.com
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Trademarks in Arkansas Schools
What's a Little John?
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Pop Quiz
 World’s Most Recognized Trademark?
Interbrand Report: A global consulting firm, publishes its brand value report every year.
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Registry with US Patent and Trademark Office
 Lengthy Process (months to years)
 Initial Application ($275-$375)for EVERY mark
 Official Gazette Publication
 Must prove your mark is exclusive
 Affords national protection of the mark
 Legal Fee: Generally, $1,500 to complete the application
process and register the mark, including an appeal
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mrmblaw.com
501-370-4633
Pop Quiz--
Vs.
This mark has been
officially registered with
the US Patent and
Trademark Office.
This is for an unregistered
mark. However, the mark
may still receive
geographical protection.
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Registered Trademarks in Arkansas
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Razorback Registration
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Benefits of Federal Registration
 Notice to the public of the registrant's claim of
ownership of the mark
 Legal presumption of ownership nationwide
 Exclusive right to use the mark on or in
connection with the goods/services listed in the
registration

Mark is not valid outside the US, though some countries
offer similar registries
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mrmblaw.com
501-370-4633
Potential Trademark Hazards
 Buna High School in Buna, Texas
 Wanted a new mascot in 2009
 School voted on a Cougar
 Hired a local sportswear vendor to design the mascot
Buna High Mascot, 2009
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Penn State Nittany Lions
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Potential Trademark Hazards
 The school’s use of Penn State’s federally
registered trademark was reported to The
Collegiate Licensing Company
 Cease and Desist letter was sent to the school
Potential Trademark Hazards
 Buna School District was given a brief phase-
out period for use of the mascot
 Had to replace all sports helmets and jerseys
 Had to repaint school vans and buildings
Pop Quiz
 Does your school’s marks (mascot, logos,
mottos) have to be federally registered to receive
protection against non-authorized users?
NO!!
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501-370-4633
Review
 Part I
 Understanding federal registered trademarks is
important….remember Burma Schools
 If your district has the time and financial means, federal
registration is the greatest protection
 Part II
 Your school’s marks likely have local protection
 There are some simple steps each school can take to
ensure continued protection of your marks
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mrmblaw.com
501-370-4633
The Lanham Act
15 U.S.C.A. § 1114(1)(a)
 A school defending its trademark must prove:
 (a) that the mark at issue is valid; and
 (b) that the defendant’s use of the mark is likely to
cause confusion.
 US Trademark Registration is NOT required
 But, cannot use the fancy
 Will only allow regional protection
 You have limited rights
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mrmblaw.com
501-370-4633
The Lanham Act
Part (a)
 A school defending its trademark must prove:
 (a)

that the mark at issue is valid; and
(b) that the defendant’s use of the mark is likely to
cause confusion.
 Valid? Courts look to see if the mark has
acquired a secondary meaning.

Tri-County Funeral Services, Inc v. Howard Funeral Home, 330 Ark. 789 (1997)
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Secondary Meaning
 A trademark acquires a “secondary meaning”
when it is so well recognized in the community
by long and exclusive use the school has a
property right in the mark.

The mark has meaning to the public beyond the obvious
meaning of the mark itself
White Hall Bulldogs
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Secondary Meaning
 A mascot has acquired secondary meaning by
supplying evidence of the public’s perception of
the mark.

Factors:
(i) the amount and type of advertising which incorporates
the mark;
 (ii) the volume of sales of the associated product;
 (iii) the length and manner of use of the mark;
 (iv) direct consumer testimony; and
 (v) surveys.

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The Lanham Act
Part (b)
 A school defending its trademark must prove:
 (a) that the mark at issue is valid; and
 (b) that the defendant’s use of the mark is likely to
cause confusion.
 Confusion?
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501-370-4633
Confusion
 (1) the strength of the owner's mark;
 (2) the similarity between the owner's mark and the alleged




infringer's mark;
(3) the degree to which the products are in competition with one
another;
(4) the alleged infringer's intent, or lack thereof, to pass off the
trademark owner as the source of the goods, or as a sponsor of
the goods;
(5) incidents of actual confusion; and
(6) the degree of care likely to be exercised by potential
customers.
• SquirtCo v. Seven-Up Co., 628 F.2d 1086, 1091 (8th Cir. 1980)
Confusion
UA v. Razorback Sports & Physical Therapy Clinic
873 F. Supp. 1280 (1995)
 Confusion is present when:
 (a) the defendant offers services that directly compete
with those offered by the plaintiff (the school district);
 (b) the defendant offers services that are so related it
implies a common source.
 UA v. Razorback Sports & Physical Therapy Clinic




The clinic’s name: Razorback Sports and Physical Therapy Clinic
The clinic offered staff members who were also employed by the UA
Clinic targeted UA athletes and High School Athletes
HOLDINGS: Court found UA’s mark was distinct and use of the
mark by the Clinic caused confusion.
Razorback Use Across Arkansas
 Hundreds of vendors use “Razorback”
 They neither directly compete nor imply a common
source
Benefits of Trademark Protection
 Financial
 Collegiate Licensing CLC
 Universities receive “royalties” for use of its marks
 Must be wide distribution of the mark
 Not always limited to Colleges

Knox County School System– Tennessee
 Local merchants were selling merchandise emblazoned
with school mascots and other logos
 Schools entered a licensing deal with Strategic Marketing
Affiliates
 School received a royalty check for $940 within first
month
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mrmblaw.com
501-370-4633
Benefits of Trademark Protection
 Trademark Dilution (lessening the fame)
 Keeps others from infringing on your mark

UA Case
 Trademark Disparagement
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mrmblaw.com
501-370-4633
Charter Schools
 17 schools currently in the state
 4 schools to be added in July
 Currently, none have organized sports
programs
 Mascots in the future?
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mrmblaw.com
501-370-4633
State Afforded Protection
 The Lanham Act

15 U.S.C.A. § 1114(1)(a)
Secondary Meaning
 UA v. Razorback Sports & Physical Therapy Clinic
 Arkansas Secretary of State

Provides State Trademark Registration
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mrmblaw.com
501-370-4633
Secretary of State
 Trademark Registration




One page application
$50.00 fee
Less rigor of “uniqueness”
Must “affirm” the mark is not
registered state or federally


Wise to consult an attorney
Provides remedies for infringement
SOS Trademark Registration
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mrmblaw.com
501-370-4633
The Take-a-Way
 Senior Class Project!
 Locate original artwork associated with your mascot
 Document how long your marks have been in use
 Register with the SOS, possibly USPTO.gov
 Maintain a file of all marks associated with your
school
 If suspected Trademark Infringement Occurs




Speak with the individual first
Arrange a mutual agreement
Send a Cease and Desist Letter
If necessary, file a lawsuit for injunctive relief
Cody Kees
mrmblaw.com
501-370-4633
The End
 Cody Kees, Attorney with Munson, Rowlett, Moore & Boone
 cody.kees@mrmblaw.com
 501-370-4633
 School Law Legal Services




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Independent Fact Finding Investigations
Teacher Fair Dismissal Act
Legislative Compliance
Grievance, Termination, and Non Renewal Hearings
The Family Medical Leave Act (FMLA)
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mrmblaw.com
501-370-4633