IP Law Daily, TRADEMARK NEWS: University sues alumni association over alleged trademark infringement; seeks injunction, damages, and attorney fees, (Oct 30, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Complaint outlines unauthorized use of university trademarks, alleging public confusion, brand dilution, and reputational harm.

The Board of Curators of Lincoln University has filed a trademark infringement lawsuit against the Lincoln University of Missouri Alumni Association, Inc. (LUAA) in the U.S. District Court for the Western District of Missouri, seeking to stop LUAA’s unauthorized use of the University’s trademarks. The University alleges that the association's actions have diluted its brand and misled alumni and donors. The complaint demands injunctive relief, damages, LUAA’s profits, attorney fees, and other litigation costs (Board of Curators of Lincoln University v. Lincoln University of Missouri Alumni Association, Inc., No. 2:24-cv-04191-BCW (W.D. Mo. Oct. 25, 2024)).

Background. Lincoln University, established in 1866 and located in Jefferson City, Missouri, is a public Historically Black College and University (HBCU) offering educational programs and managing athletic teams known as the “Blue Tigers.” LUAA is a nonprofit alumni association operating independently from the University to promote alumni engagement and organize events among graduates.

Unauthorized use of trademarks and public confusion. According to the complaint, the University holds trademarks, including "Lincoln University," "LU," and "Blue Tigers," that reflect its identity and reputation, with some marks in use for over a century. The University claims that LUAA used these trademarks without permission, creating confusion about the association's relationship with the University and misleading the public and donors into believing LUAA's activities are endorsed or affiliated with the institution.

The complaint alleges that LUAA's continued use of the University’s marks undermines the distinctiveness of the University’s brand and harms its reputation by interfering with its ability to control its public image. The University contends that LUAA’s actions have caused significant public confusion and diluted the goodwill associated with the trademarks.

Attempts to formalize trademark use. The complaint reveals that the University attempted to formalize its relationship with LUAA over the past two years by proposing a Memorandum of Understanding (MOU). This MOU would have governed LUAA’s use of the University’s trademarks and ensured compliance with intellectual property laws. However, LUAA allegedly refused to sign the agreement, prompting the University to issue several warning letters demanding compliance.

On June 10, 2024, the University sent a letter notifying LUAA that its relationship would be terminated if the association did not adhere to trademark policies. LUAA’s response, dated June 20, 2024, was unsatisfactory. Follow-up letters from the University on June 26 and August 15 requested further clarification, but LUAA postponed a proposed meeting to late September. The University formally severed its relationship with LUAA on September 3, 2024, demanding that LUAA immediately cease all use of the University’s trademarks.

Continued unauthorized use. Despite the termination, the University alleges that LUAA continued using the trademarks without authorization. The complaint highlights specific instances of misuse, including a membership form and an October 2024 newsletter circulated by LUAA’s St. Louis chapter, which prominently featured the University’s marks. It also points to LUAA’s use of the University’s trademarks on social media, arguing that these posts further contributed to public confusion.

The University claims that LUAA’s actions misled alumni and donors, creating the false impression that contributions to LUAA would benefit the University. The unauthorized use of the trademarks, the University argues, has harmed its reputation and jeopardized its ability to attract support.

Claims and reliefs. The lawsuit raises multiple claims under both federal and state law, including false designation of origin and unfair competition under Section 43(a) of the Lanham Act. The University also asserts claims for trademark dilution and common law trademark infringement under Missouri law, arguing that LUAA’s actions weakened the distinctiveness and value of its intellectual property.

The complaint contends that LUAA's actions were intentional and designed to profit from the goodwill associated with the University's trademarks. The University seeks a permanent injunction barring LUAA from using any of its marks or confusingly similar marks in any capacity.

The University has requested monetary damages, including an accounting of LUAA’s profits derived from the unauthorized use of the trademarks. It requests compensation for corrective advertising to mitigate the harm caused by public confusion, along with attorney fees, litigation costs, and treble damages under the Lanham Act. The University further seeks a detailed accounting of all funds raised through the unauthorized use of its trademarks and prejudgment and post-judgment interest on any monetary award granted by the court.

Request for jury trial. The University has requested a jury trial, asserting that LUAA’s continued unauthorized use of its trademarks has caused irreparable harm to its reputation and goodwill. The Board of Curators contends that without judicial intervention, LUAA’s actions will continue to mislead the public and cause further damage.

The Case is No. 2:24-cv-04191-BCW.

Judge: Wimes, B.

Attorneys: Clinton G. Newton (Hardy & Bacon, LLP) for Board of Curators of Lincoln University.

Companies: Lincoln University of Missouri Alumni Association, Inc.

News: Trademark MissouriNews