As higher education institutions increasingly outsource external trademark licensing to third party servicers, colleges and universities should remain diligent when internally licensing their trademarks with student groups and departments in order to maintain the value of the institution’s trademark within the institution. Because of this, having strong policies and procedures in place is essential.
Here are six tips to consider when reviewing, revising, or drafting your internal trademark policies and procedures.
1. Have an express statement that no groups can use institutional marks without written approval through the institution’s internal licensing process.
Make it clear to the campus community that they may not use institutional marks without obtaining proper approval.
2. Properly describe each protected mark.
Specify whether the trademark protects a word, symbol, or design and provide an example of the mark so that members of the campus community know what is protected. This will help campus groups determine if they need to apply for a license or change their design to avoid using a university mark altogether.
3. Ensure quality control.
Institutional policies should clearly outline the institution’s quality control mechanisms, such as a design approval process (see Tip #4). These quality control mechanisms are crucial to maintaining the mark’s value and “goodwill,” or the benefit from consumer recognition of the mark in association with the institution’s services.
Consider limiting the scope of each license to a single category of items. For example, if the student group wants to incorporate a design with a university mark on the group’s website and on t-shirts, institutional policy could require a separate license for each.
4. Outline a licensing process.
Create a standard licensing process that details the entity or person at the institution who is responsible for approving each license. The policy should identify the design guidelines that applicants must follow to obtain a license—including deadlines for the application and approval process to ensure that the process is completed within a reasonable timeframe. The policy should specify if student groups may only produce items with a university mark through an approved vendor.
5. Apply licensing requirements consistently and equally to all groups.
It is crucial for public institutions to avoid viewpoint discrimination and ensure every application receives equal treatment. Accordingly, the institution’s reviewing authority should uniformly apply the licensing processes and standards—as outlined in the policy—to each group’s application. In Gerlich v. Leath, (8th Cir. June. 13, 2017), a student group at a public institution successfully asserted First Amendment violations after the institution deviated from its typical internal licensing procedures and denied a student group the use of the institution’s trademark because of the viewpoint of the student group. The court determined that the institution’s actions constituted viewpoint discrimination.
If a group does not receive approval for a trademark license, the institution will need to specifically explain why the application was denied. The denial should also provide suggestions about how the student group could amend the application to obtain approval.
6. Clearly identify usage standards.
The institution should clearly outline trademark usage standards that groups must follow after obtaining a license. Usage standards can include font, spacing, and color preferences and design scales to prevent distortion.
These standards should be consistently and rigorously enforced by the institution in order to maintain trademark consistency.
What this means to you:
While institutions have focused on creating strong external trademark licensing policies and procedures, institutions should take the time to review and revise their internal licensing policies and procedures to emphasize quality control and consistency among all users. These revisions will help institutions to maintain the value of their trademarks within the institution.