University Book Store v. University of Wisconsin Board of Regents

Hohein, Administrative Trademark Judge.

The Applications

Applications have been filed by The Board of Regents of the University of Wisconsin System (hereinafter applicants or the University) to register the following marks for various items of apparel: (i) a badger design, . . . which is popularly known as Bucky Badger (and henceforth will be referred to by either such name or as simply Bucky) for clothing, . . . (ii) the same badger design on a block letter W (hereinafter Bucky on W), . . . and (iii) WISCONSIN BADGERS for clothing,

In addition, applicant seeks to register the Bucky Badger, Bucky on W, WISCONSIN BADGERS marks for, in each instance, educational services, . . . [and] entertainment services. . . .

The Pleadings

Registration has been opposed by The University Book Store (hereinafter UBS), . . . Brown's Book Shop (hereinafter Brown's), . . . and The Wisconsin Merchants Federation (hereinafter WMF), an association incorporated in the State of Wisconsin which is composed of approximately 350 wholesale or retail merchandising businesses located throughout the State of Wisconsin. . . . Similarly, with respect to the WISCONSIN BADGERS mark, opposers claim that the terms WISCONSIN and BADGERS were created centuries ago and that, with respect to the former, extensive use thereof has been made by non-affiliated entities since the 1700s, while such use by the Board of Regents has occurred only since the 1850s. As to the term BADGERS, opposers maintain that it has been used to refer to residents of the State of Wisconsin since at least the 1820s; that, while extensive use thereof has been made by non-affiliated entities since that time, such use by the Board of Regents did not begin until the 1880s; and that, with respect to the words WISCONSIN BADGERS, non-affiliated entities have used such words at least since the time that the Board of Regents started using those words.

Opposers further allege that uses of the marks in issue by non-affiliated entities have included imprinting the marks on clothing and other goods; manufacturing and selling such goods; using the marks in advertising and promoting the sale of such goods; and using the marks to promote sports exhibitions and to create customer goodwill. Opposers also contend that during the early 1980s, the Board of Regents indicated in response to several inquiries by non-affiliated entities that anyone was free to use the lucky Badger figure and the words WISCONSIN BADGERS since, as confirmed in internal correspondence, it did not claim ownership rights therein. . .

Abandonment

Turning first to the claim of abandonment, since it is the ground common to all six oppositions, opposers essentially contend that whatever ownership interests, if any, applicant may be said to have had in the Bucky Badger, Bucky on W and WISCONSIN BADGERS marks, such rights have been lost by applicant's failure over many years prior to January 1988 to control the nature and quality of numerous third-party uses of the marks. Applicant, while not disputing opposers' assertion that it did not actually create the marks in issue, argues that the purchasing public regards the marks as having originated with applicant inasmuch as it has adopted and continuously used them as indicia of source or origin for its goods and services. Although opposers, in particular, point to statements made prior to January 1988 by certain personnel of applicant that the marks were in the public domain and therefore were free to be used by anyone, applicant maintains that such statements, which involved only a relatively few isolated incidents, were in error and that circumstances, including its course of conduct over the years, have served to preserve the source-indicating function of each of the marks as that of signifying applicant.

Section 45 of the Trademark Act provides in relevant part that [a] mark shall be deemed to be "abandoned" when, among other things, the following occurs:

(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.

As explained by Judge Nies in Wallpaper Manufacturers, Ltd. v. Crown Wallcovering Corp., maintenance of exclusivity of rights in a mark is not required in order to avoid a finding of abandonment, since [f]ew longstanding trademarks could survive so rigid a standard. Instead, so long as at least some members of the purchasing public identify applicant with each of the marks at issue, it cannot be said that applicant's course of conduct has caused any of such marks to lose its significance as a mark. In this case, as in Crown, it is necessary to remember that:

[There is a] distinction between conduct of a trademark owner which results in a loss of right to enjoin a particular use because of an affirmative defense available to that user and conduct which results in the loss of all rights of protection as a mark against use by anyone. Only when all rights of protection are extinguished is there abandonment. While this states only a conclusion without any guides as to when all rights are deemed to have been lost, it is helpful, nevertheless, to keep the distinction in mind.

Thus, under Crown, whether any of the opposers has a right to continue to use any of the marks applicant seeks to register is not determinative of the question of abandonment; rather, the focus must be on what rights, if any, applicant has in the marks. Moreover, as emphasized in Crown, a mark becomes abandoned only when the mark loses its significance as an indication of origin, not the sole identification of source. Stated otherwise, in light of the pertinent change in statutory language made by the Trademark Law Revision Act of 1988, abandonment occurs only when a mark loses its significance as a mark. The court recognized, however, with respect to the obligation to police a mark, that:

Without question, distinctiveness can be lost by failing to take action against infringers. If there are numerous products in the marketplace bearing the alleged mark, purchasers may learn to ignore the mark as a source indication. When that occurs, the conduct of the former owner, by failing to police its mark, can be said to have caused the mark to lose its significance as a mark. However, an owner is not required to act immediately against every possibly infringing use to avoid a holding of abandonment. Such a requirement would unnecessarily clutter the courts. Some infringements are short-lived and will disappear without action by the trademark owner. . . . . Other infringements may be characterized as creeping, starting as a business name, and only become serious when later use is as a trademark. . . . .

. . .

Accordingly, applying the relevant law to the material facts not genuinely in dispute, we find that applicant has not abandoned the marks which it seeks to register. By way of background, it is clear that the Bucky Badger figure was created in 1940 by Arthur C. Evans, an artist with the firm then known as the Anson W. Thompson Company, which was requested by Brown's to produce, for sale by Brown's, a sheet of decals which included mascots designed and intended to represent applicant. Decals were then a very popular item with college students and the particular set commissioned by Brown's, . . . included the drawing of a belligerent Bucky Badger -- standing upright with chest thrust outward, wearing a ribbed letterman's W sweater and boxing gloves, and featuring a determined upright stance, a no-nonsense stride and, perhaps most notably, a scowling facial expression -- which became the standard representation. . .

Brown's has continuously sold decals depicting Bucky since 1940 and, later on, UBS likewise sold a version of such decals. Applicant's earliest use of the Bucky Badger figure it seeks to register occurred in 1948, when Bucky appeared on the front cover of the University's 1948 FOOTBALL FACTS AND CENTENNIAL SPORTS REVIEW. Although the Bucky Badger figure also eventually came to signify applicant's educational services, the earliest documented use of Bucky in such capacity is an appearance on the front cover of a 1957-58 Freshman Course Guide , which was edited by the Curriculum Committee of the University's student association and was published through the courtesy of the University Co-op, as UBS (which changed its name in 1964) was then known. Insofar as use of the Bucky Badger mascot on clothing is concerned, both UBS and Brown's were selling apparel which was so imprinted by the early 1950s and have continued to do so along with many other members of WMF. Marketing of such clothing by applicant did not occur until, at the earliest, sometime in 1983.

While it is undisputed that the Bucky Badger figure was by then well established as the mascot for the University's athletic teams, it was not until the 1949 Homecoming football game that a name for the mascot was chosen. As part of the homecoming festivities, The Pep Committee sponsored a contest to name the mascot, but none of the names suggested by the various student organizations which were invited to participate seemed fitting. The Pep Committee therefore came up with its own recommendation and announced such name as the contest winner. As reported on the front page of the November 12, 1949 edition of the Wisconsin State Journal : The cocky, little fellow who adorns all Wisconsin publicity material, and who is the university's official mascot [,] was christened Buckingham. . . . The name Buckingham, which was immediately shortened to Bucky, apparently was derived from England's Buckingham Palace, which was then in the news because of preparations for the Festival of Britain celebration.

With respect to use of the Bucky on W mark, the record reveals that Brown's sold clothing imprinted therewith during the 1950s and continued to do so through the 1960s. Other members of WMF, but not UBS, have also sold T-shirts, sweatshirts and/or caps imprinted with the Bucky on W mark. Actual use thereof by applicant, for both imprinted clothing and its athletic entertainment services, first occurred about 1983 as a variation of its licensed athletic department logo.

As to the WISCONSIN BADGERS mark, it is plain from the record that the words BADGER and BADGERS have long been associated with applicant. For example, the former word has been continuously used as the title of the University's yearbook since about 1889 and the latter term has been continuously used, first in reference to applicant's football team and later to refer as well to its other athletic teams, since 1893. While the phrase WISCONSIN BADGERS has long been used as a nickname for applicant's athletic teams and their fans, including members of the student body and faculty involved with the University's educational services, the earliest documented reference to applicant's athletic teams as the WISCONSIN BADGERS appears in a 1945 newspaper article. By the late 1980s such usage was quite prevalent. The record further discloses that Brown's, since as early as 1955, and UBS, since the early 1960s, have continuously sold clothing bearing the mark WISCONSIN BADGERS and that third parties, including certain other members of WMF, have sold and/or continue to sell such imprinted apparel during the period from 1945 to the present. By contrast, it was not until the early 1980s that applicant itself first made actual use of the WISCONSIN BADGERS mark on imprinted clothing.

While opposers are consequently correct that in most instances, applicant has not been the first user of the subject marks for the goods and services for which registration is sought, it is critical to keep in mind that none of the opposers, or any third party, has ever used such marks as its own mark to identify and distinguish the particular goods and services involved in these proceedings. Opposers have admitted, in their responses to applicant's requests for admissions, that they have never made use of the marks applicant seeks to register as their marks. Instead, it is manifest from the record that opposers, and third parties alike, have merely sold and occasionally advertised items of apparel and other merchandise which have been imprinted with the marks.

Such sales and advertising by opposers and various third parties for many years prior to applicant's institution of a formal licensing program in January 1988 simply reflect the fact that applicant, over the years, tolerated sales and advertising of goods, including clothing, bearing the marks it presently seeks to register. Applicant, like numerous other colleges and universities, permitted others to sell imprinted merchandise as expressions of community support and goodwill. Advertising of merchandise featuring various indicia associated with applicant, including the marks at issue herein, frequently coincided with events sponsored by applicant, such as athletic events and alumni gatherings.

Thus, rather than constituting uncontrolled use by opposers and third parties which resulted in the marks losing all source indicating significance, the reality of the situation which existed for many years may best be characterized as that of a royalty-free, nonexclusive, implied license to use marks which, particularly in and around the University's Madison campus, principally signified applicant in the mind of the consuming public and have continued to do so. Although there is evidence that, chiefly among tourists and summer session students from outside the State of Wisconsin, the marks sought to be registered by applicant identify the State of Wisconsin instead of or in addition to the University, it is undisputed that, to a significant portion of the relevant public, the subject marks identify applicant as the primary source of its educational and entertainment services and as the secondary source of the apparel imprinted with such marks. Except for one minor instance, there is nothing in the record which even suggests that the nature and quality of the imprinted apparel sold by opposers and others was anything less than that of at least merchantable quality. While it is also the case that, by and large, applicant had no formal system of quality control over the subject marks before January 1988, it must be remembered that the inference of abandonment is not drawn . . . [where] satisfactory quality was maintained, and, hence, no deception of purchasers occurred. Therefore, even without, essentially, a formal system of quality control over the clothing and other imprinted merchandise sold by opposers and numerous third parties, the subject marks were not abandoned by applicant since the quality of the apparel imprinted with such marks remained at an acceptable level in virtually all instances.

Furthermore, while it is true that, as to the Bucky Badger figure and the terms BADGER and/or BADGERS, Bucky and such words are in a sense ubiquitous, especially in and around the State of Wisconsin, due in large part to the facts that the badger ( taxidea taxus ) is the Wisconsin state animal and that Wisconsin is nicknamed the Badger State, the third-party uses of Bucky and the terms BADGER and/or BADGERS shown on the record with respect to various diverse and distinctly different businesses located in Madison and other localities in the State of Wisconsin simply do not demonstrate that applicant has abandoned the marks it desires to register. Rather, and not surprisingly, that certain third parties, particularly those operating in and around Madison, are using the Bucky Badger image and/or the designation BADGER in connection with such disparate businesses as a laundromat, a bowling alley, a dental practice, and a restaurant/bar and social club clearly reflect an effort by those establishments to appeal to students at the University and thereby solicit their patronage. Use by other third parties of the Bucky Badger figure and/or the term BADGER, in conjunction with such vastly different commercial enterprises as a fence company, a trucking firm, a bus company, a locksmith and security business, an automobile parts wholesaler, an industrial sand and limestone producer, a radiator repair shop, a snack food wholesaler, a food canning company, a medical supply firm, a self-storage facility, a balloon delivery service, a wholesale food distributor and a moving company, is plainly meant to emphasize or underscore that those firms are based in Madison or otherwise are located in the State of Wisconsin.

Opposers, in stressing that such uncontrolled uses by third parties amount to a forfeiture of any rights applicant may have had in the subject marks, are basically contending that applicant must maintain a right in gross in each mark. However, as noted previously, exclusivity of rights is not required as a matter of law in order for applicant to avoid a finding of abandonment. Even in instances where, arguably, applicant and others are each using the Bucky Badger figure and/or the words BADGER and BADGERS, such as the use thereof by the Badger Conference and Niagara High School and the use of Bucky by groups of cross-country runners, Vietnam veterans and firefighters, the activities of these third parties are sufficiently different and distinct in nature from the university level educational and entertainment services rendered by applicant so as to preclude any inference of abandonment of the subject marks by applicant. Consequently, while a number of third parties, as well as applicant, use the image of Bucky Badger and/or the words BADGER or BADGERS in connection with their activities and the promotion thereof, the fact that such indicia have been diluted and are accordingly weak in terms of the scope of protection to which they would be entitled does not mean, in the case of both the uses thereof made by applicant, and those by its nonexclusive, implied licensees which inured to applicant's benefit, that the marks applicant seeks to register have lost their significance as marks.

Opposers also assert that until January 1988, applicant not only failed to object to any uses of the subject marks by others, but conceded that such marks were in the public domain and thus could be used by anyone. Specifically, opposers place heavy emphasis on their contention that in the early- and mid-1980s, applicant disclaimed any protectable trademark interest in marks it now seeks to register by affirmatively stating, both in letters to third parties which had inquired as to whether permission to use the marks was necessary and in an internal memo, that the subject marks were in the public domain. For example, a November 5, 1982 letter signed by Michael A. Liethen, who was then the director of the University's Office of Administrative Legal Services, replied as follows to an inquiry received by applicant from Northern Cap Manufacturing Company:

This is in response to your October 12, 1982 letter inquiring about using University of Wisconsin-Madison logos on a line of headwear you plan to manufacture and sell.

With one exception, University of Wisconsin-Madison logos are in the public domain. They may therefore be used without a license or royalty arrangement with the University. The exception is the [athletic department] image of Bucky Badger superimposed over a large W. This particular logo is trademarked in the name of the Board of Regents of the University of Wisconsin System.
As for the logos which are in the public domain, they may be used without any prior arrangement with the University. Of course, your products using these logos may not be marketed in any way which states or implies that the product or product-line is endorsed by the University. The University would consider legal action under those circumstances.

. . .

Opposers nevertheless acknowledge that, during this time frame, applicant modified the basic form letters it sent in response to third-party requests for permission to use the marks at issue. In particular, beginning in 1983 and continuing until the commencement of its formal licensing program in conjunction with CCI/ICE, letters written by Gail Snowden, who as an attorney with the University's Office of Administrative Legal Services was principally assigned the duty of responding to third-party inquiries regarding use of the subject marks and reviewing (along with Mr. Hove and Ms. Robinson) the nature and quality of any licenses granted, make no mention of the marks as being in the public domain. Instead, if the uses proposed were considered to be in good taste and otherwise did not imply University endorsement or expose the University to potential product liability problems, applicant granted the requests it received to use the marks on a royalty-free, nonexclusive basis. . . .

Moreover, uncertainties created by the litigation leading to Pitt III , including the prior decision by the court of appeals in University of Pittsburgh v. Champion Products Inc., led applicant, as expressed by Mr. Hove in a December 17, 1982 memo to Mr. Liethen, to question its stance:

Earlier this week I was in Chicago at a meeting with my counterparts from around the Big Ten. The Michigan State representative was talking about their recent move into licensing their university name, seal, athletic mascot, etc. I asked him how they could do this since what they were suddenly protecting had been in the public domain for such a long time. He claimed that a recent reversal of the lower court opinion in the Champion vs. Pitt case has thrown out the public domain argument. According to him, it is now possible to control everything -- including permission to use the name of your school on commercial items.

If this is the case, I feel we should rethink our position on this whole matter. There is a considerable amount of potential revenue to be realized from a licensing program. . . . .

What is important for present purposes is not whether applicant was correct in its belief that the subject marks were in the public domain and therefore could be used by anyone, but whether such position had the effect on the relevant purchasing public, including not just the ultimate consumers but also UBS, Brown's, certain additional WMF members and other retailers which have marketed apparel imprinted with the marks, of causing the marks to lose their significance as marks.

. . .

Opposers additionally fault applicant for failing to act against third-party users, including asserted infringers, and for a lack of effective quality control. In particular, opposers accuse applicant of failing to seek out and object to uses of the marks at issue or to take meaningful action with respect to instances of third-party use known to applicant. Opposers’ contentions, however, ignore the reality of the symbiotic relationship which existed between the University and various businesses located in and around its Madison, Wisconsin campus. As mentioned earlier, the record is clear that applicant tolerated various uses by others of the marks it seeks to register as expressions in the business community of goodwill and support for the educational and entertainment services provided by applicant. The presence of the University, with its faculty, support personnel and large student population, provided in turn a significant source of customers for local businesses, including the bookstores run by UBS and Brown's as well as other firms which in large measure have catered to the various needs of persons at the University.

Moreover, as previously pointed out, with but a single insignificant exception, there is no evidence that the nature and quality of imprinted apparel displaying the subject marks has been anything other than, at a minimum, that which meets the standard of merchantable quality, even in the absence of a formal licensing program by applicant. While the record also reveals a few sporadic and short-lived instances of uses of the Bucky Badger image and/or name in ways which applicant and some members of the purchasing public found offensive or indecent, standard of tastefulness, even if somewhat subjectively and at times haphazardly maintained, was effectively the norm.

. . .

Finally, opposers urge that there has been no fundamental change in the market for merchandise imprinted with the marks at issue which would justify applicant's adoption of its formal licensing program and excuse its asserted delay in claiming enforceable rights after many years of essentially regarding the marks as public property. Aside from the fact that, as discussed above, the supposition concerning applicant's alleged delay and its belief that the marks were in the public domain do not entitle opposers to relief on their theory of abandonment, the record is clear that applicant had legitimate reasons for adopting a formal licensing program and including therein the subject marks. Not only was applicant increasingly concerned with the prospect of additional embarrassing, obscene or other inappropriate uses of the marks and potential product liability problems if the marks were used in connection with dangerous, unsafe or unauthorized products or events, but the entire nature of the market for merchandise imprinted with college and university indicia underwent a major change starting at about the end of the 1970s. While it is undisputed that, unlike the situation in Helpingstine , applicant has experienced only a steady rather than a sudden or sharp increase in the growth of sales of merchandise imprinted with indicia of the University, the market as a whole for merchandise, including apparel, bearing major college and university insignia increased dramatically during the late 1970s and continued to grow appreciably throughout the 1980s. The substantial growth in the popularity of such items, and the resultant need by the colleges and universities affected thereby for tighter control over their names and other identifying symbols, caused applicant and other similarly situated institutions of higher learning to recognize that the protection and enforcement mechanisms offered by formal licensing programs were necessary in order to avoid the problems brought about by the fundamental change in the market for imprinted collegiate merchandise.

Many of the producers of such goods likewise realized that to preserve the value or desirability of their merchandise, a formal system of licensing and enforcement, of the type provided by CCI/ICE, worked to their advantage and did so in spite of the higher prices caused by the imposition of licensing fees. Thus, rather than being merely a brazen attempt by applicant, as opposers insist, to bail out the deficit in its athletic department by depriving retailers of their accustomed profits on products imprinted with the subject marks, it is plain that applicant was simply acting within its rights inasmuch as the marks signified the University and continue to do so to a significant portion of the purchasers of such merchandise. We also note in this regard that, significantly, the record plainly shows that no other college or university uses such marks.

In summary, not only is it the case that none of the opposers, or any third party, has ever used the marks at issue as its own mark for the particular goods and services set forth in the applications involved in these proceedings, but the use thereby was tantamount to a royalty-free, nonexclusive, implied license from applicant which inured to applicant's benefit. Applicant tolerated uses of the marks, when their use in advertising and on clothing and other types of imprinted merchandise were plainly in reference to the University, as expressions of support for its athletic and academic programs by the business community. With but one inconsequential exception, the record is devoid of any evidence which even raises an inference that the quality of merchandise imprinted with the subject marks has ever been anything less than that of at least merchantable quality. Similarly, except for a few occasional and transitory incidents, clothing and other items bearing the marks at issue have reflected applicant's standard that such merchandise be in good taste, Applicant, in effect, has maintained adequate control over the nature and quality of the goods and services sold under the marks, both prior to and after the commencement of its formal licensing program with CCI/ICE, and has policed its marks in accordance with due regard for the scope of protection to which they are entitled.

Consequently, while many third parties use or have used the Bucky Badger image and the words BADGER and/or BADGERS in connection with a wide variety of diverse businesses and activities which are distinctly different from the goods and services for which applicant seeks registration, such evidence demonstrates only that the marks are diluted and therefore weak. . . . Plainly, in these circumstances, the marks have not lost all significance as marks for applicant's goods and services and therefore, as a matter of law, have not been abandoned.

. . .

Accordingly, for the above reasons, applicant's motion for summary judgment is granted. . .