On January 19, the United States Court of Appeals for the Federal Circuit affirmed the U.S. Trademark Trial and Appeal Board’s (“TTAB”) refusal to register The University of South Carolina’s (“South Carolina”) interlocking “SC” logo in connection with apparel. The Federal Circuit agreed with the TTAB that there was a likelihood of confusion between South Carolina’s logo and the “SC” interlocking logo used by the University of Southern California (“Southern California”) that had previously been registered in connection with apparel and other products. See Univ. of South Carolina v. Univ. of Southern California, No. 2009-1064, 2010 U.S. App. LEXIS 1001 (Fed. Cir. Jan. 19, 2010) (nonprecedential opinion).
The Federal Circuit employed the multifactor “likelihood of confusion” inquiry that is common in trademark infringement cases. With respect to the first two factors – similarity of marks and similarity of goods – South Carolina did not dispute that the parties’ marks were legally identical and would appear on the same classes of goods. See id. at *5.
Regarding the third factor – whether the parties’ products are sold in the same trade channels – the Federal Circuit agreed with the TTAB that this factor weighed in favor of a likelihood of confusion, due to Southern California’s registration covering “university authorized” trade channels, which the TTAB broadly interpreted to encompass “any trade channels which are or could be authorized” by Southern California. See id. at *7-8.
The next “likelihood of confusion” factor that South Carolina challenged was “conditions of purchase.” South Carolina argued that the TTAB had concluded incorrectly that new fans and casual fans, as well as consumers purchasing the parties’ goods as gifts, were susceptible to confusion due to the inexpensive nature of the goods. In this respect, the Federal Circuit agreed with South Carolina and held that the TTAB’s conclusion was based on speculation and not supported by substantial evidence. However, the Federal Circuit also held that this was harmless error, and that “even if the Board erred in its finding that certain consumers were unsophisticated, this error would not require reversal” due to the other factors supporting a likelihood of confusion. See id. at *9-10.
South Carolina also challenged the TTAB’s conclusion that the length of time during which the parties had used concurrently their marks without evidence of actual confusion weighed only slightly in South Carolina’s favor. The Federal Circuit agreed with the TTAB that this factor should be accorded little weight due to the schools being on opposite sides of the country and in different athletic conferences, and thus “there had not been any significant opportunity for actual confusion to have occurred.” See id. at *11.
The Federal Circuit also affirmed the TTAB’s grant of summary judgment against South Carolina in connection with South Carolina’s counterclaim to cancel Southern California’s trademark registrations, finding that South Carolina could not show a genuine issue for trial regarding whether the “SC” initials “point uniquely” to the State of South Carolina. Id. at *16-17. The court noted the evidence showing that “SC” refers to many entities, including at least sixteen other universities and colleges. Accordingly, South Carolina could not show a genuine issue on whether the initials uniquely point to the State.
Trojan fans rejoice! The decision leaves USC as the sole rightsholder to the interlocking “SC” and its use in connection with apparel, sends the University of South Carolina branding experts back to the drawing board, and creates a collector’s item for those who possess Gamecocks apparel with the interlocking South Carolina “SC.”