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more on Trademark Snafu, U of Georgia to lose name?
From: David Farber <dave () farber net>
Date: Sun, 30 May 2004 12:25:29 -0400
Begin forwarded message:From: "Michael Froomkin - U.Miami School of Law" <froomkin () law miami edu>
Date: May 29, 2004 8:52:43 PM EDT To: David Farber <dave () farber net> Cc: Ip <ip () v2 listbox com> Subject: Re: [IP] Trademark Snafu, U of Georgia to lose name? FOR IP Dave, they should have talked to a trademark lawyer before running with this silly story. Even if one assumes the worst and most unlikely set of facts for U. Ga.,it wouldn't have a lot to worry about unless there's something unusual in
Georgia law. Under federal law, at least, in any state where the stateuniversity partakes of the state's sovereign immunity that university can
more or less infringe all the trademarks it wants. Although the Supreme Court has not ruled on the precise issue that would be raised in this case, it has held in closely related contexts that states have sovereign immunity against both Patent infringement (527 US627) and Lanham Act false advertising claims (527 US 666). Odds are good
that the logic of those decisions would extend to a straight trademarkinfringement claim under the Lanham Act. Cf. Idaho Potato Com'n v. M & M Produce Farms & Sales, 95 F. Supp. 2d 150 (S.D.N.Y. 2000), aff'd, 238 F.3d 468, 57 U.S.P.Q.2d 1728 (2d Cir. 2001) (Eleventh Amendment state sovereign immunity prevents assertion of antitrust claim and claim for cancellation
of the IDAHO potato certification mark). The University *might* have some exposure under Georgia state law if the state has waived its sovereign immunity for trademark suits. Oh wait -- never mind -- I just Googled this and the story is even MORE nonsensical than it seemed. According to the Macon Telegraph, whatactually happened is that, "On top of that, the foundation applied for the
trademark to the University of Georgia name last year after finding out the school itself let the trademark lapse in 1997." Letting a registration lapse allows other people to use the name in somecircumstances, but it doesn't constitute abandonment (that requires years
of non-use or an intent to abandon). As the Supreme Court said in 1900: "To establish ... abandonment, it is necessary to show not only actsindicating a practical abandonment, but an actual intent to abandon. Acts
which unexplained would be sufficient to establish an abandonment may be answered by showing that there never was an intention to give up and relinquish the right claimed." (179 U.S. 19 at 45) In other words, even if the new application is granted, it doesn't allow the new registrant to stop you using it -- so long as your use was continuous at all relevant times. (Just checked...yup, U.GA. is still there.) Let me assure all your readers that if firm A has long been using a name when firm B applies for a TM on that same name, and firm A acts promptly to protect its rights there is NO WAY that the firm with the longer continuous record of use -- even if it let the registration lapse -- is going to "lose the right to its name". The very worst case, almostcertainly inapplicable in this case, is that if Firm 1 and Firm 2 were in
different lines of business, then Firm 1 would lose the right to expand into Firm2's line of business. So long as it doesn't involve the Internet (where admittedly things aresometimes nutty), most trademark infringement law is pretty fair and comes out the way any reasonable and honest person would expect it to. [Note for
other lawyers. I said "infringement" and not "dilution".] Repeat: There is NO WAY even "in theory" that this act could "force the University of Georgia, founded in 1785, to stop calling itself the University of Georgia." It is possible, however, that by taking this action, the foundation may be able to prevent the University from making the *Foundation* change *its* name. But that's it. -- http://www.icannwatch.org Personal Blog: http://www.discourse.net A. Michael Froomkin | Professor of Law | froomkin () law tm U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA +1 (305) 284-4285 | +1 (305) 284-6506 (fax) | http://www.law.tm -->It's warm here.<-- On Sat, 29 May 2004, David Farber wrote:
Begin forwarded message: From: EEkid () aol com Date: May 29, 2004 8:01:55 AM EDT To: dave () farber net Subject: Trademark Snafu, U of Georgia to lose name? U of Georgia to lose name? Friday, May 28, 2004 After 219 years, the University of Georgia could become the school with no name. UGA's already messy divorce from its fund-raising organization took a nasty, unexpected twist Thursday: It turns out that the university doesn't hold the trademark to its own name. Instead, in papers filed last year, the University of Georgia Foundation has declared itself the owner of all things labeled "University of Georgia." In doing so, the nonprofit foundation asserted control over every commercial use of the university's moniker, from UGA-embossed coffee mugs to boxer shorts — to "education services, namely providing instruction at the college level," according to its trademark papers.It's not clear how the trademark filing will affect a yearlong disputeover attempts by some foundation trustees to oust UGA President Michael Adams. But the name issue puts a new spin on the state Board of Regents' decision Tuesday to end UGA's 67-year relationship with the foundation.On Wednesday, regents' leaders said that if the foundation remained inbusiness, it could no longer operate with the university's imprimatur. State officials described UGA's name as the regents' "intellectual property." But, at least in theory, the foundation could try to force the University of Georgia, founded in 1785, to stop calling itself the University of Georgia. http://www.benmaller.com/archives/2004/may/28- u_of_georgia_to_lose_name.html ------------------------------------- You are subscribed as froomkin () law miami edu To manage your subscription, go to http://v2.listbox.com/member/?listname=ipArchives at: http://www.interesting-people.org/archives/interesting-people/
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