University of Georgia Will NOT Be “Losing Its Name”

The more than two-century-old University of Georgia is having a nasty spat with the 67-year-old “University of Georgia Foundation”. As part of the spat, the Foundation is seeking to trademark the “University of Georgia” name, having discovered that U.Ga. let the registration lapse a few years ago. The Foundation apparently did this because the state is threatening to remove the Foundation's right to use the U.Ga. name.

According to a correspondent on Dave Farber's mailing list at least one of the newspapers covering this has leapt to the conclusion that this might mean that 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.

Nonsense.

Here's what I sent Farber on the subject:

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 there.)

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.