In late July 2011, the University of Iowa succeeded in preventing the University of Southern Mississippi from obtaining federal trademark registration for its “golden eagle” logo.
Southern Miss.’s logo appears on the left, Iowa’s Hawkeye logo appears on the right.
U. of Iowa opposed Southern Miss.’s trademark registration application—which covered a wide variety of hard goods and other merchandise—claiming that the golden eagle logo is too similar to its Hawkeye logo, and therefore creates a likelihood of confusion amongst relevant consumers (presumably college sports fans generally, since alumni would likely be familiar with their alma mater’s mascot (also, the TTAB referred to them as “the same class[] of ordinary consumers”)). U. of Iowa prevailed on its opposition, and Southern Miss. appealed. The TTAB (Trademark Trial and Appeal Board) upheld the denial of registration on July 29.
In sustaining the denial of Southern Miss.’s trademark registration application, the TTAB noted the “renown” of the Iowa Hawkeye logo, which has been in use for more than thirty years, and also noted that generally U. of Iowa is more recognizable as sports university than Southern Miss. As a result, the Hawkeye logo is subject to a “wider scope of protection.”
In addressing the similarity of the trademarks, the TTAB found itself unpersuaded by Southern Miss.’s argument that the two logos are visually dissimilar. While acknowledging that the trademarks “are not identical when dissected into their component parts,” the TTAB found that “in the normal marketing environment, purchasers would not usually have the luxury of examining marks in such minute detail.” As a result, it found that the marks were “sufficiently similar in terms of their commercial impressions” to create a likelihood of confusion:
“Ordinary purchasers who are familiar with [U. of Iowa’s] marks on collateral goods, upon later encountering [Southern Miss.’s] mark on identical collateral items, would not necessarily remember fine details about the mark they had previously seen, given consumers’ imperfect recall, and they are likely to remember the marks as being essentially the same.”
At first I disagreed wholeheartedly with this conclusion. The TTAB focused on sports memorabilia, and it seems to me that a person who wants to buy a U. of Iowa jersey knows what the Iowa Hawkeye looks like. Plus, one is an eagle, and the other is a hawk. Plus the two logos just look different to me.
However, when viewing the trademarks in the context of actual goods, the TTAB’s position becomes more understandable (though I’m still not sure I necessarily agree with its decision):
In these examples, the overall commercial impressions do appear quite similar (and the TTAB is permitted to consider trade dress put into evidence in analyzing likelihood of confusion cases).
Southern Miss. also argued that the marketplace is “replete with bird head designs,” and therefore they should not be excluded from joining the herd. While the TTAB generally agreed, it still noted that U. of Iowa is entitled to a “reasonable zone of protection around its Hawkeye marks.” Apparently this zone extends to the “golden eagle” logo.
Overall, the decision is an interesting exposition of the trademark likelihood of confusion analysis. It seems that the general similarity of the designs coupled with the two schools’ similar color schemes was the driving force behind the denial of registration. Sports teams and other companies considering adopting new logos need to carefully analyze the market and their competition to try to discern whether a proposed trademark is too similar to any pre-existing trademarks.
One final interesting point of note: Prior to U. of Iowa’s opposition filing, the USPTO trademark examiner denied registration on the basis of likelihood of confusion with two “EAGLE” (standard character word) trademarks. Thus, not only was Southern Miss. required to consider all pre-existing “bird head” trademarks when selecting its trademark, it was also required to consider pre-existing trademark registrations for the word “eagle” which describes its graphic trademark.
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