IP Law Daily, TRADEMARK—N.D. Ill.: Jury must decide if University of Illinois has abandoned its disavowed ‘Chief Illiniwek’ logo, (Oct 2, 2023)

By Robert Margolis, J.D.

Whether continued sales of Chief Logo products constituted bona fide use of mark after public statements by University officials disavowing logo created material fact dispute.

Whether the University of Illinois abandoned its logo depicting Chief Illiniwek after the NCAA’s policy prohibiting use of imagery hostile to Native Americans, and after University officials publicly disavowed the logo, raised material questions of fact that could not be decided on summary judgment, the federal district court in Chicago has held. The court denied a partial summary judgment motion by defendant Vintage Brand, LLC, on the abandonment affirmative defense Vintage asserted in a lawsuit the University filed alleging that Vintage had infringed the University’s registered Chief Illiniwek trademark by selling merchandise bearing that logo. Because discovery in the case had not yet ended, the motion was denied without prejudice (The Board of Trustees of the University of Illinois v. Vintage Brand, LLC, September 29, 2023, Blakey, J.).

Chief Illiniwek logo. The University owns a federally registered trademark for an image of “Chief Illiniwek” (the “Chief Logo”), used in connection with educational services, athletic performance, and merchandise and apparel (U.S. Reg. No. 2,232,024). In 2005, the NCAA adopted a policy prohibiting NCAA colleges and universities from displaying certain imagery deemed hostile to Native American cultures, and the University was specifically identified as displaying prohibited imagery. The University subsequently approved a resolution immediately concluding the use of Native American imagery, including the Chief Logo as a symbol of the University and in connection with athletics. In 2007, it announced it would strictly limit use of the Chief Logo, such that retail stores could no longer carry Chief Logo products after the end of that year, though such products remained in stores until at least 2010. In that same announcement, the University stated it planned to maintain ownership rights in the Chief Logo. Since 2007, University officials have repeatedly disavowed the use of the Chief Logo as a representation of the University.

The University operates a “College Vault” program through Collegiate Licensing Company (“CLC”), which licenses legacy marks that no longer represent the University’s athletic programs. A limited group of licensees may sell those products online. The University added the Chief Logo to its College Vault program in 2008, and licensees through that program continue to sell Chief Logo products. Between 2013 and 2022, licensees have distributed and sold 27,249 products with the Chief Logo, netting $449,749.47 in sales, which is approximately 0.6 percent of all University licensing revenue.

Lawsuit. The University sued Vintage for trademark infringement for selling merchandise bearing the Chief Logo, Vintage asserted an affirmative defense that the University has abandoned the Chief Logo, and moved for partial summary judgment on that affirmative defense.

Bona fide use. Abandonment of a trademark occurs when “its use has been discontinued with intent not to resume such use,” with “[n]onuse for 3 consecutive years” serving as “prima facie evidence of abandonment.” 15 U.S.C. § 1127. “Bona fide use” of a mark in the ordinary course of trade will rebut a claim of abandonment. Id. At issue in Vintage’s motion was whether the University’s College Vault program usage qualifies as a bona fide use. The court held that there were questions of fact as to this issue, which precluded summary judgment.

Source-identifying. The court first addressed Vintage’s argument that the use in the College Vault program was not source identifying, but rather ornamental, so it could not be a bona fide use. The court cited other court decisions finding that school logos are source identifying, because consumers’ desires to associate with a school drives the purchase of apparel with those logos.

Next, the court found that the University’s public disavowals of the Chief Logo were not dispositive, as the marks may remain source identifying despite those disavowals if the public still views the mark as having that association. The court noted that a public disavowal may show a future intent to abandon, and the public statements by the University could be interpreted as saying that, but the University in fact continued to use the mark through its College Vault licensing program after its public disavowals. The parties disputed whether the relevant consuming public knows about the disavowals and the ceasing of use of the Chief Logo other than through the College Vault program. This fact dispute, and the record being largely undeveloped because discovery had not yet closed, meant that Vintage had not established that the use of the Chief Logo was merely ornamental, rather than “source-identifying” such that it could be a bona fide use.

Trademark maintenance program. Vintage next argued that the College Vault did not constitute a bona fide use because it was merely a trademark maintenance program intended only to reserve a right of bona fide use in the future. Again, the court found a material factual dispute on this issue. Unlike the cases Vintage cited, where the plaintiff’s use of a trademark was only in connection with the sale of other products (rather than the sale of the trademarked products themselves), here there was evidence that consumers purchase Chief Log products because of the logo itself, believing the University to be the source of those products. Since the evidence on how the public perceived the products was incomplete and in dispute, the court held that it did not suffice to grant Vintage summary judgment.

Sales volume. Sales volume can be one of several factors that a court will look at to indicate whether abandonment has occurred. Here, Vintage argued that the sales through the College Vault program were “de minimis” compared to the overall volume of University licensed products sales, and cited cases finding that de minimis use can support an abandonment defense. But as the court pointed out, the more than 27,000 sales of Chief Logo products far exceeds the number of sales in the cases Vintage had cited. Vintage cited no legal authority for the proposition that the de minimis question turns on the percentage of overall volume of sales. The court thus rejected Vintage’s argument that sales volume supported its abandonment defense.

The case is No. 1:21-cv-06546.

Attorneys: Jason Paul Stearns (Smith Gambrell & Russell LLP) and Andrew L. Goldstein (Freeborn & Peters, LLP) for The Board of Trustees of the University of Illinois. Joshua Harms (Stokes Lawrence, P.S.) and Todd Postma (Hoogendoorn & Talbot LLP) for Vintage Brand, LLC and Sportswear Inc. d/b/a Prep Sportswear.

Companies: The Board of Trustees of the University of Illinois; Vintage Brand, LLC; Sportswear Inc. d/b/a Prep Sportswear

MainStory: TopStory Trademark IllinoisNews GCNNews