Losing the SC Trademark

Edwin Turnage brings clarity to a confusing and controversial subject as he weighs in on the recent decision by the US Patent and Trademark Office to strip South Carolina of the right to use Coach Ray Tanner's interlocking SC logo. Read inside for his commentary and in-depth analysis of the facts regarding this case that has been closely scrutinized by Gamecock fans in recent days.

Several news organizations have reported on an August 1, 2008, decision issued by Trademark Trial and Appeal Board of the United States Patent and Trademark Office stripping the University of the right to use Ray Tanner's Interlocking SC baseball emblem. (See Seth Emerson, The State, Aug. 9, 2008). The other writings on this subject are somewhat confusing, so I thought it would be worthwhile to discuss more details on the (bad) Decision by the Board.

The Board's decision, which was definitely adverse to South Carolina, affects South Carolina's continued free use of the interlocking SC baseball trademark (depicted to the right, and below).

Although University spokespersons have suggested that the Board's recent Decision has little practical affect on the use of the emblem, it actually does seriously jeopardize the continued use of the interlocking baseball emblem by the University.

The Decision, if it stands, makes the continued marketing of baseball gear containing the interlocking SC risky for the University. Because the Athletic Department is unlikely to sacrifice revenue from the sale of Carolina baseball clothing and hats, the University will probably either appeal the Decision, or adopt another baseball symbol before the 2009 season.

This analysis looks in detail at the impact of the Board's Decision and the reasoning behind it.

The Decision means that continued use of the interlocking SC baseball emblem would expose South Carolina to a lawsuit by USC (West), and a likely adverse judgment. Under Trademark law, USC (West) could file a federal lawsuit and seek to enjoin Carolina against continued use of Ray Tanner's interlocking SC. Because the Gamecocks are on television, USC (West) could file a lawsuit for dilution of its trademark, even if the University decides not to market clothing with the interlocking SC.

Moreover, if the Gamecocks do market products with the interlocking SC, USC (West) could ask for monetary damages and could potentially force the University to disgorge any profits made from clothing sales. The Decision means that continued use of the interlocking SC mark would constitute a knowing infringement of USC (West's) trademark. Thus, Carolina could even be liable for treble damages, and might have to pay USC (West's) attorneys' fees and costs. The way the hourly rate crowd of lawyers charge clients for this kind of work, that could add up to many tens of thousands of dollars.

The risks described above are too much for the University to stomach. If the Board's Decision is not appealed, it is unlikely that Ray Tanner's interlocking SC will survive. That is a shame.

Turning to the 93-page Decision, I have to say it constitutes the worst in results-oriented jurisprudence. It really is quite a nasty decision that ignores substantial evidence offered by the University at the trial.

The litigation began when USC (West) filed an "Opposition Petition." The Opposition Petition opposed the University's attempt to register its interlocking baseball mark with the U.S. Trademark office. USC (West's) opposition was based, in part, on its previous registration of the USC (West) mark.

In the litigation, Carolina asserted a counter-claim, arguing that USC (West's) interlocking SC should be disregarded because it ignored common law rights held by Carolina to use the SC mark. Carolina argued it had used SC emblems since the 1890s. Carolina also argued that the State of South Carolina, of which the University is a political subdivision, had used the SC designation since colonial times.

The first erroneous element of the Decision is a finding that the two symbols would likely confuse the public. This "finding of fact" seems highly questionable in view of the undisputed evidence of dissimilarity that was presented at trial.

Obviously, one can look at the two marks and see they are clearly different.

Thus, the witnesses for both sides admitted the marks were different and not confusingly similar at trial. Even USC (West's) witness, Dan Stimmler, the Associate Vice President of Auxillary Services, admitted the marks were distinctive.

Stimmler was in a job that qualified him to evaluate the distinctiveness of the two marks. His responsibility at USC (West) included oversight of the Book Store, a unit that sold and marketed USC (West's) baseball clothing. (Decision at Page 56-57).

Likewise, Carolina presented a witness (Walsh) from an organization that administered both schools' clothing licensing. That witness testified, under oath, that the two marks were not confusingly similar. Thus, the testimony by all of the key witnesses responsible for clothing sales was consistent: the marks were distinctive and not confusingly similar.

However, the Board disregarded the undisputed testimony. It made the following finding:

Once the Board found the two marks confusingly similar, it turned to the South Carolina counterclaim. The South Carolina lawyer, John C. McElwaine, Esq., an attorney employed by Nelson Mullins Riley & Scarborough, argued that Carolina had used the SC designation since around 1890. However, USC (West's) lawyer won the argument by asserting that South Carolina abandoned the SC mark from 1982 until 1991.

Again, the only testimony in the record supported South Carolina's position that "SC" was used by the University continuously. An archivist familiar with University history testified in support. However, according to the Board, the University lawyers did not introduce any documentary or photographic evidence to support the archivist's testimony. The Board disregarded it, finding her testimony not credible.

Attorney McElwaine also introduced evidence that the State of South Carolina had used the SC symbol continuously. USC (West) stipulated to it and it was undisputed that South Carolina has used SC continuously since colonial times.

McElwaine argued that South Carolina's use of SC established a common law right for the University's use the letters SC.

The Board rejected this argument as well, concluding that the SC designation used by the State was a "purely informational reference." Naturally, driving to its ultimate conclusion, the Board held that the State's continuous use of SC symbols had no bearing on trademark issues between the two schools.

See (Decision, at Page 90-92).

It will be interesting to see if the University is willing to foot the bill for filing an appeal of this Decision. The cost of the appeal, if handled by a mega defense firm like Nelson Mullins, will be staggering. On the other hand, it does seem important that South Carolina should fight for its right to the letters "SC."

Edwin Turnage is a longtime member of GamecockAnthem, where he is known as "YazooTrue. Be sure to catch all of Edwin's insight on his "PhotonTorpedoTube" blog: http://photontorpedotube.blogspot.com/

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