Iowa says USM’s “Golden Eagle” to similar to their “Hawkeye”
In the world of college athletics, a university logo or mascot means almost everything. Especially at a place like the University of Iowa, where there is no professional athletic team and the Iowa Hawkeyes have come to represent not only the school itself, but an entire state. So it’s not surprising that University of Iowa officials were not pleased in 2003, when the University of Southern Mississippi (USM) debuted a Golden Eagle logo that looked eerily similar to the Iowa Hawkeye, a logo that has been in use for over 30 years. The next year, Iowa officials filed an opposition against USM’s application to register their new Golden Eagle with the US Patent and Trademark Office (USPTO) as a trademark, on the grounds that the two logos were “confusingly similar.” Recently, the USPTO denied USM’s trademark application, ruling 2-1 in favor of Iowa (link opens a PDF).
The University of Iowa’s Hawkeye logos.
USM’s new logo.
USM’s previous logo.
Some Background
Iowa registered their Hawkeye logo over thirty years ago and adopted the “Hawkeye” nickname for their sports teams over 100 years ago. USM, on the other hand, has undergone several name changes, ranging from Tigers to Southerners, before becoming the Golden Eagles in 1972.
After using a gold and black attack eagle as their logo for several years (see above), USM revealed their new Golden Eagle mark at a press conference in 2003. However, USM’s new logo not only changed their former shade of gold to an amber yellow, they also dropped their “Southern Miss” lettering. This new Golden Eagle quickly turned into a fan favorite, becoming USM’s best-selling logo ever.
So what’s the big deal?
Because a logo identifies the school or team itself, that mark is crucial to revenue brought in by the schools through merchandising and TV exposure. Both USM and Iowa have NCAA Division 1 athletic programs that bring in a great deal of revenue through national TV exposure via lucrative contracts with networks like ESPN. A distinctive logo helps your students and fans stand out in the crowd. Both schools use their logos to license everything from apparel to jewelry to school supplies. It’s no wonder Iowa was concerned about the similarity between the two logos and what impact that might have on potential consumers.
The Legal Nitty-Gritty
Iowa filed an opposition to USM’s trademark application, arguing that the two marks are “confusingly similar.” The federal Lanham Act, the statue which governs trademark law, prohibits the registration of confusingly similar marks.
To determine whether the two logos were confusingly similar, the USPTO’s panel of judges applied a multi-factor test to consider such issues as the relationship between the goods and services being sold, the degree of the similarity between the marks, and the presence of other similar marks in the industry.
Editorial Note: these types of inquiries are highly fact-specific. As a result, a detailed analysis of the issues at hand is warranted here. This case serves as an illustration of how complex these issues are, and why it is impossible to create easy-to-follow rules of the road. Onward…
After reviewing the background evidence and the marks themselves, two of the three USPTO judges held that both schools used the marks for nearly identical goods and that because of the market overlap for the goods, consumer confusion could have a significant impact on the schools and their revenue streams.
As for the actual similarity between the marks, the panel determined that, especially with USM’s color change (from gold to yellow), the marks created a “virtually identical commercial impression.” The ruling seemed to suggest that had USM kept their old shade of “Vegas” gold and/or used “Golden Eagles” or “Southern Miss” in the new logo they would have been able to use the mark. However, given the marks as presented to the USPTO, while the most sophisticated consumer or hardcore fan would be able to notice the subtle differences between USM’s new Golden Eagle and the Iowa Hawkeye, a less knowledgeable consumer would not know the difference.
Perhaps USM’s strongest argument was that there is an abundance of “bird head” logos throughout sports, professional and college, including the Philadelphia Eagle (NFL), or the Atlanta Hawk (NBA), the St. Joseph’s Hawks (NCAA). However, the USPTO panel determined that professional sports marks were neither relevant nor nearly as similar to the Hawkeye as USM’s new Golden Eagle. Furthermore, the few NCAA Division 1 programs (like St. Joseph’s) using “bird head” logos were of entirely different colors, shapes, and angles. The USM and Iowa marks were of a similar oval shape, facing right, and had essentially the same colors.
In the end USM was denied the chance to protect their best-selling logo in school history as a trademark, a decision that left USM officials unsure of what to do next. Iowa officials have declined comment and USM officials have said that their attorneys are reviewing the USPTO opinion and are considering legal alternatives, such as a potential appeal to the Court of Appeals for the Federal Circuit in Washington D.C. As of this writing, the homepage of the USM athletics website still includes the Golden Eagle.
Once again, this drives home the lesson that it’s not worth it to stray too close to your competitors’ trademarks. Establish your own distinctive brand, and you will be the one in the stronger position.
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