Is It Time for Some Football? Well Coach, If You Snooze, You (Might) Lose Your Trademark

Unlike the rights accorded creators of copyrighted works or patented inventions, rights to federal trademark protection does not begin with conception or creation of the mark and does not have a limited duration. Trademark rights and protections flow from use of the mark with specific goods or services so that consumers recognize the trademark as an indicator of the origin of those goods or services. In theory, trademark rights can last indefinitely (the earliest of Coca-Cola’s registrations is still valid after more than 120 years).

However, trademark owners have different obligations than holders of copyrights or patents. First and foremost is the requirement of continuous use. A copyrighted work is protected for the statutory period even if it is never widely read or heard, and an inventor need never move beyond the conceptual stage in order to hold continuous patent rights. By contrast, a trademark that is not continuously used may be deemed abandoned and potentially reenter the public domain for others to register as their own. At Sherman IP, we regularly counsel clients on the critical importance of the proper and regular use of their registered marks.

Use alone is not enough, however, to maintain the panoply of federal trademark rights offered by the United States. To avoid cancellation of a federal trademark registration, a trademark owner must from time to time file certain maintenance or renewal documents. The purpose of this requirement allows the United States Trademark Office to maintain the accuracy of the federal Trademark Registers. Typically, a Trademark owner must file an Oath or Affirmation that the mark remains in use in commerce, identify the goods or services continuing to be used in association with the mark, and pay a filing fee. Because these filings are typically required at intervals of several years, they are often overlooked. It was just such an oversight that recently brought two traditional collegiate football rivals together to take on a common foe in a costly two (2) year effort to win back valuable trademark rights .

Every November for more than forty years, Southern University and Grambling State University have met on the gridiron in the “Bayou Classic”. The game and its related activities typically attract more than 200,000 fans and supporters and generate substantial licensing and royalty fee payments by purveyors of “Classic”- themed merchandise.

In 1974 Southern registered its “Bayou Classic” trademarks with the Louisiana Secretary of State. Like the federal Lanham Act, Louisiana’s trademark statute requires a registrant to periodically file renewal documents. Through circumstances not discussed in the Court’s opinion, the schools let pass a 2012 deadline for filing the renewal of the trademark. They kept playing football though; the Bayou Classic went on.

When the schools attempted to file the trademark renewal in 2013, they learned that someone else had in the interim registered the Bayou Classic mark, and registrations were now claimed by Gary Shelton.

In 2014, Southern filed suit, seeking cancellation of Shelton’s registrations. Its continuous use of the “Bayou Classic” mark was indisputable. Citing case law that stands for the proposition that ownership of a mark is established by use in the market, not registration, on October 3, 2016 the Court granted Southern’s motion for summary judgment and ordered that Shelton’s registrations be canceled.

An Ounce of Diligence……can save many “pounds” of legal fees and expenses. Whether your mark is registered under federal or state law (or both), the Southern University v. Shelton case illustrates the importance of satisfying all post-registration filing requirements.

Sherman IP’s trademark practice actively files renewals and other post-registration filings. Let us know if we can help you with yours.