Anyone who follows college football knows that the USC Trojans are having a rough go of it. After years of Pac-10 domination, the Trojans are currently unranked and eliciting such commentary as “USC is on its way to falling off the college football map.” Having been born and raised in Eugene, Oregon (go Ducks!) as the daughter of a former UCLA wide receiver (go Bruins!), I can’t say I’m heartbroken by this turn of events. (Warning to USC fans: fun will be poked at your beloved Trojans below.) [Note from the USC Alumnus Editor: Ms. Wilkes’ comments are her individual views and do not represent the opinions of Law Law Land. Also, Ms. Wilkes’ unabashed willingness to kick a program when it’s down is duly noted.]
But where USC has fallen short on the football field, they have compensated in the legal field, leaving one college team reeling (no, not Washington State): the Gamecocks of the University of South Carolina, also known to proud South Carolinians as “USC.” At stake was a 13-year-old issue — whether the University of South Carolina could register the logo “SC” for the sale of Gamecocks sports merchandise, which the Trojans did decades ago. (In case anyone else is wondering what a Gamecock is, see here. Any of the myriad jokes I could make about this mascot are inappropriate for this blog, and are probably redundant with what you’re already thinking anyhow. Moving on.)
The Trojans have two registered “SC” marks: one for the letters “SC” in standard typeface, and one for their famous interlocking block letters. In 1997, the University of South Carolina first sought to register its SC logo, which features curvy letters in lieu of the Trojans’ block letters, for use on clothing, including hats, uniforms, T-shirts and shorts. The Trojans objected, contending that their “SC” marks had priority over the Gamecocks’ proposed mark and that the proposed mark would create confusion with the Trojans’ marks. Known as the “likelihood of confusion” test, trademark law prohibits the use of identifying marks that are likely to cause confusion among consumers as to their origin.
After considering the evidence, a Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office concluded that the Gamecocks could not register their curvy “SC” logo because the Gamecocks’ proposed mark was “legally identical” to the Trojans’ standard typeface mark; the marks would “appear on the same classes of goods in the same channels of trade”; and “some consumers would exercise little care in making purchases.” The TTAB believed that while loyal fans of a particular school — i.e., die-hard Trojans — would not be confused, people buying merchandise as gifts or new or casual fans were likely to be.
As an aside, you may have noticed that the Gamecocks’ “SC” logo and the Trojans’ “SC” logo look quite different from each other. But because the Trojans smartly registered a trademark in not only their logo but also the letters “SC” in normal typeface, that means that no matter how different the Gamecocks try to make their “SC” logo with respect to color, shape and/or size, it will still be “legally identical” to the Trojans’ standard typeface mark. In the eyes of the law, notwithstanding the differences between the logos:
“Game” for another fight (wokka wokka), the University of South Carolina appealed the TTAB’s decision to the Court of Appeals for the Federal Circuit. In January 2010, the Federal Circuit issued its opinion, affirming the TTAB’s decision to refuse registration of South Carolina’s mark. The Federal Circuit, where the “SC” case was decided, looks at a whopping 13 factors in assessing “likelihood of confusion” (the lynchpin test for all trademark disputes), including the similarity of the marks, the similarity of goods and services being sold under the marks, the fame of the senior mark, and the “market interface” between the competitors. But the panel in this case focused only on the three factors for which South Carolina appealed the TTAB’s decision: the similarity of the trade channels in which the competing “SC” products would be sold, the conditions of purchase and sophistication of buyers, and the existence (or lack thereof) of reported incidents of actual consumer confusion.
The Federal Circuit found that the TTAB’s findings that gift-buyers or new or casual fans might be fooled were speculative. Still, the court found that this was a harmless error because the findings that the marks were legally identical, and would appear on the same classes of goods in the same trade channels, was enough to support a finding of likelihood of confusion.
In other words, the court found that the fact that the Gamecocks would be peddling “SC” baseball caps and other sports merchandise, through the same channels that the Trojans peddle their “SC” goods, supports the TTAB’s finding that someone is likely to buy the wrong hat. After the victory, the Trojans’ lawyer gloated that the letters “SC” were more deservedly linked to the Trojans’ warrior image than to “a goofy little chicken.”
South Carolina’s website brags that “In the brutal sport of ‘gamecocking,’ the gamecock repeatedly demonstrated the necessary ferocity and tenacity by fighting to its last gasp.” Apparently this same tendency has rubbed off on the Gamecocks’ legal team, who decided to appeal the circuit court’s decision to the United States Supreme Court. On October 4, 2010, the first day of the Supreme Court’s new session, the high court announced that it would not hear the appeal, which lets the circuit court ruling stand, effectively ending the schools’ 13-year legal battle. In the epic battle of USC v. USC, the mighty Trojans have officially vanquished the scrappy Gamecocks. Loyal Gamecock fans will have to continue to sport their team’s mascot instead of the more refined “SC.”
Next time, maybe the Gamecocks should take on the Trojans in a venue where they have a better shot: the football field. I’d place my money on those “goofy little chickens.” [Ed. Note: please see editor’s note in first paragraph above.]