A recently filed lawsuit in Washington state provides some useful takeaways in the realm of brand protection for educational institutions.
Gonzaga University is a small Catholic university in Spokane, Washington, counting among its alumni Bing Crosby and NBA Hall of Famer John Stockton. Despite a student population of around 7,500, the school has managed to punch well above its weight in NCAA men’s basketball, appearing in the March Madness tournament 16 years in a row and making the Final Four in 2017. Gonzaga’s sports teams are known as the Bulldogs.
In late October 2017, the university filed suit in federal court in Washington against the owners of a bar in Spokane that had adopted the name “The Bulldog Bar & Grill.” Unfortunately for the defendants, the university operates an on-campus dining facility called The Bulldog – and had registered the trademark.
This may look like a garden-variety case of an institution enforcing its brand against a small local freeloader. What makes the case noteworthy?
First, Gonzaga’s case is based primarily on its Washington State trademark registration for “THE BULLDOG.” A search of USPTO records shows that the university has not had a great deal of success registering its BULLDOG word or logo marks at the federal level (presumably because the name is so popular and is also used by other majorcollege athletic programs). The federal trademark act (the Lanham Act) provides a federal cause of action under Section 43 (15 U.S.C. § 1125) for “false designation of origin” – for which a federal trademark registration is not required. Moreover, the state trademark registration enabled the university to assert a cause of action arising out of the Washington trademark statute. The takeaway: state trademark registrations – which are relatively inexpensive and easy to obtain quickly – can be very useful brand enforcement tools, particularly in instances where federal registration may be difficult or impossible.
Second, Gonzaga’s registration for THE BULLDOG is specifically for “bar and restaurant services,” which puts the university in a far stronger position than if it were enforcing a registration that was limited to educational services and the like. This illustrates the need for educational institutions to register their marks not merely for their core educational services but also for the other goods and services they may offer or license others to offer.
Third, the case reminds us of the delicacy with which brand owners need to handle those that may be using the brand as fans or to show affinity. Overly aggressive enforcement can backfire badly and cause all kinds of negative publicity. In this case, the complaint states that the university “communicated with defendants on multiple occasions that it has concerns over and objects to the defendants’ use of The Bulldog.” Moreover, photos of the establishment attached to the complaint suggest that this may not exactly be a brand-enhancing use.
The case is The Corporation of Gonzaga University v. Baldwin Adventures LLC d/b/a The Bulldog Bar & Grill, Case No. 2:17-cv-00367-SAB, U.S. Dist. Ct. E.D. Wash. (filed Oct. 30, 2017).