The U.S. Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (TTAB) decision refusing registration to the University of South Carolina for a university logo including an interlocking “S” and “C.”  In University of South Carolina v. University of Southern California, 2010 WL 157220 (C.A. Fed. 2010),  The University of Southern California opposed registration of the mark arguing, among other things, that South Carolina’s mark would create a likelihood of confusion with Southern California’s interlocking “S” and “C” trademark.

South Carolina counterclaimed for cancellation of Southern California’s trademark registration claiming that the letters “SC” falsely suggest an association with the State of South Carolina.  The TTAB granted summary judgment in favor of Southern California holding that South Carolina lacked standing to bring the claim and, even if it had standing, the TTAB would hold for Southern California because South Carolina did not establish a genuine issue of fact on whether the initials “SC” are uniquely and unmistakably associated with the State of South Carolina.

South Carolina appealed and argued the TTAB misapplied the following three factors guiding the TTAB’s decision whether a mark is likely to confuse: similarity of trade channels, the care consumers employ when purchasing goods, and the absence of evidence of actual confusion.  The Federal Circuit rejected each of South Carolina’s arguments.

Though the Federal Circuit found that the TTAB took an unnecessarily limited view of standing when it ruled that South Carolina lacked standing to request cancellation of Southern California’s mark, the court nonetheless affirmed the TTAB’s ruling because South Carolina did not show a genuine issue of material fact for trial.  To prevail on a Section 2(a) Lanham Act claim for cancellation based on false association, a party must show that the challenged mark is “unmistakably associated” with another person or institution.  The court determined that South Carolina failed to carry its burden on summary judgment because “SC” identifies at least 16 other universities and colleges.

If you are involved in a trademark dispute, if you want to protect your brand, or if you suspect your trademarks or brands are being used improperly, you should contact counsel experienced in protecting and enforcing intellectual property rights. A knowledgeable attorney will be able to help you to analyze the merits of a potential claim by or against a third party, and he or she also may be able to help you to find alternatives to litigation, such as licensing arrangements or other out-of-court resolutions.