Collegiate Color Trademarks: Not A Pigment Of Your Imagination

School colors have long served as a way for students, alumni and fans to show allegiance to their schools. Various color schemes appear on the flag flown on game day, are shouted as a rally call, or are shown and written on a favorite T-shirt, bringing supporters together as a community to say "we've got spirit!" But these colors are more than a way to tell if a stranger deserves a high five or heckling on game day; they, along with traditional trademarks, are part of universities' licensing portfolios that brought in total royalty revenues of $209 million in 2013.1.

A 2008 Fifth Circuit decision has lent further support to the position that school colors are protectable as trademarks, particularly when they are shown with some indicia pointing to or suggesting the school.2. The case arose when Louisiana State University, the University of Oklahoma, Ohio State University, the University of Southern California, along with the schools' licensing agent, sued Smack Apparel Company for selling unlicensed t-shirts. The apparel did not mention the schools by name, but featured the schools' color schemes and additional unregistered indicia of the schools and their sports teams.

The schools claimed protectable trademark rights in their unregistered color combinations "especially when used in connection with other indicia identifying or suggesting the schools." The parties agreed that an unregistered color scheme could be protected as a trademark if it had acquired secondary meaning and was not functional. A mark acquires secondary meaning when its primary significance, as understood by the consumers, is to identify the source of the product. After considering factors including the length and manner of use of the marks, the volume of sales associated with the marks, the amount and manner of advertising, and the defendant's intent in copying the marks, both the District Court and the Fifth Circuit Court found that the schools' color combinations in conjunction with other indicia had acquired secondary meaning.4.

Ultimately, Smack's t-shirt designs were found to infringe the trademark rights of the universities. Based on factors including the similarity of the marks, the similarity of the products, identity of retail outlets and purchasers, the intent of the defendant, and the degree of care exercised by potential purchasers, the court held that Smack's use of the marks was likely to cause confusion in the minds of potential customers.5...