Begin forwarded message:

From: "Michael Froomkin - U.Miami School of Law" <[EMAIL PROTECTED]>
Date: May 29, 2004 8:52:43 PM EDT
To: David Farber <[EMAIL PROTECTED]>
Subject: Re: [IP] Trademark Snafu, U of Georgia to lose name?


Dave, they should have talked to a trademark lawyer before running with
this silly story.

Even if one assumes the worst and most unlikely set of facts for U. Ga.,
it wouldn't have a lot to worry about unless there's something unusual in
Georgia law. Under federal law, at least, in any state where the state
university partakes of the state's sovereign immunity that university can
more or less infringe all the trademarks it wants.

Although the Supreme Court has not ruled on the precise issue that would
be raised in this case, it has held in closely related contexts that
states have sovereign immunity against both Patent infringement (527 US
627) and Lanham Act false advertising claims (527 US 666). Odds are good
that the logic of those decisions would extend to a straight trademark
infringement claim under the Lanham Act. Cf. Idaho Potato Com'n v. M & M
Produce Farms & Sales, 95 F. Supp. 2d 150 (S.D.N.Y. 2000), aff'd, 238 F.3d
468, 57 U.S.P.Q.2d 1728 (2d Cir. 2001) (Eleventh Amendment state sovereign
immunity prevents assertion of antitrust claim and claim for cancellation
of the IDAHO potato certification mark).

The University *might* have some exposure under Georgia state law if the
state has waived its sovereign immunity for trademark suits.

Oh wait -- never mind -- I just Googled this and the story is even MORE
nonsensical than it seemed. According to the Macon Telegraph, what
actually happened is that, "On top of that, the foundation applied for the
trademark to the University of Georgia name last year after finding out
the school itself let the trademark lapse in 1997."

Letting a registration lapse allows other people to use the name in some
circumstances, but it doesn't constitute abandonment (that requires years
of non-use or an intent to abandon). As the Supreme Court said in 1900:

"To establish ... abandonment, it is necessary to show not only acts
indicating a practical abandonment, but an actual intent to abandon. Acts
which unexplained would be sufficient to establish an abandonment may be
answered by showing that there never was an intention to give up and
relinquish the right claimed." (179 U.S. 19 at 45)

In other words, even if the new application is granted, it doesn't allow
the new registrant to stop you using it -- so long as your use was
continuous at all relevant times.  (Just checked...yup, U.GA. is still

Let me assure all your readers that if firm A has long been using a name
when firm B applies for a TM on that same name, and firm A acts promptly
to protect its rights there is NO WAY that the firm with the longer
continuous record of use -- even if it let the registration lapse -- is
going to "lose the right to its name". The very worst case, almost
certainly inapplicable in this case, is that if Firm 1 and Firm 2 were in
different lines of business, then Firm 1 would lose the right to expand
into Firm2's line of business.

So long as it doesn't involve the Internet (where admittedly things are
sometimes nutty), most trademark infringement law is pretty fair and comes
out the way any reasonable and honest person would expect it to. [Note for
other lawyers. I said "infringement" and not "dilution".]

Repeat:  There is NO WAY even "in theory" that this act could "force the
University of Georgia, founded in 1785, to stop calling itself the
University of Georgia."  It is possible, however, that by taking this
action, the foundation may be able to prevent the University from making
the *Foundation* change *its* name. But that's it.

--   Personal Blog:
A. Michael Froomkin   |    Professor of Law    |   [EMAIL PROTECTED]
U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
+1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  |
                         -->It's warm here.<--

On Sat, 29 May 2004, David Farber wrote:

Begin forwarded message:

Date: May 29, 2004 8:01:55 AM EDT
Subject: Trademark Snafu, U of Georgia to lose name?

U of Georgia to lose name?

Friday, May 28, 2004

  After 219 years, the University of Georgia could become the school
with no name.

  UGA's already messy divorce from its fund-raising organization took a
nasty, unexpected twist Thursday: It turns out that the university
doesn't hold the trademark to its own name. Instead, in papers filed
last year, the University of Georgia Foundation has declared itself the
owner of all things labeled "University of Georgia."

  In doing so, the nonprofit foundation asserted control over every
commercial use of the university's moniker, from UGA-embossed coffee
mugs to boxer shorts — to "education services, namely providing
instruction at the college level," according to its trademark papers.

It's not clear how the trademark filing will affect a yearlong dispute
over attempts by some foundation trustees to oust UGA President Michael
Adams. But the name issue puts a new spin on the state Board of
Regents' decision Tuesday to end UGA's 67-year relationship with the

On Wednesday, regents' leaders said that if the foundation remained in
business, it could no longer operate with the university's imprimatur.
State officials described UGA's name as the regents' "intellectual

  But, at least in theory, the foundation could try to force the
University of Georgia, founded in 1785, to stop calling itself the
University of Georgia.

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