08 October 2013

US Edubrands

The 65 page 'University TM: Trademark Rights Accretion in Higher Education' by Jacob H. Rooksby in Harvard Journal of Law and Technology (Forthcoming) notes that
Since the mid-1970s, American colleges and universities have quietly been amassing trademark portfolios of substantial portion and variety. Although some scholars have examined college and university trademark activities on an anecdotal level, these activities largely have escaped comprehensive empirical and theoretical analyses. This Article fills the void by reporting results of a study to identify every federal trademark registration currently owned and maintained by an American college or university. The results reveal a staggering number of trademarks accreting in higher education. Once thought of as a provincial and ancillary activity pertaining strictly to institutional names and athletic concerns, this Article makes the case that college and university trademark activity is an important and growing pursuit with significant policy implications for higher education. This Article discusses and analyzes these concerns with a view toward establishing a model for college and university trademark behavior that is consistent with the public’s interest in higher education.
Rooksby comments that
This Article is by no means the first to consider how accretion of commercial trappings is changing the character of American higher education. In this sense, the data presented here can be considered further evidence of the rise of what legendary scholar and college president Clark Kerr identified as the “multiversity.” Administrative functions are central to the identity of the multiversity, which strives to be more like industry rather than emulate any ancient, romantic concept of “the idea” of the university. The modern multiversity is a complex balance of disparate activities and interests held together by a conservative governance structure. Acquisition of trademarks by the dozen is very much consistent with the administrative- and administrator-driven characterization of modern higher education. Perhaps cognizant of losing earlier fights to maintain claim over some aspect of their intellectual commons, colleges and universities are choosing to be proactively defensive and protective of anything the law allows them to claim as “theirs.” 
Other possible explanations for this behavior abound, informed by academic perspectives as diverse as sociology, organizational theory, and management. Subsequent efforts should be undertaken to examine why trademark rights accretion has occurred, and what forces drive it, but ultimately I want to conclude with a view toward the future: what would a model for college and university trademark behavior look like? Perhaps by stating an ideal, commentators can better assess where we are now, and practitioners can reflect on where best to go next. I think every institution needs to start by identifying which trademarks are truly “mission critical” to the institution. That is to say, which trademarks protect the primary identity and essence of the institution? 
The answer is likely to be an array of formal and abbreviated names, logos, and insignia. Federal trademark registrations for these items are defensible and often necessary. Likely to be further afield are trademarks for programs, slogans, and products that were developed at the institution. These are less often necessary to protect any internal or popular conception of what it is the institution “does,” and in some instances— particularly where they lay claim to some aspect of the public good—may not even be defensible. 
As part of this conscientious exercise, institutions should place primacy on protecting trademarks that create licensing opportunities instead of only creating enforcement opportunities. The licensing opportunity, however, should have some clear nexus to the institution, apart from merely reflecting a product, service, or idea that emanated from the institution. Licensing opportunities abound if what is sought are trademarks of a generalized and broad sort, such as “bioflex” for scientific research, or “the premier online high school” for high school education services. What links these marks, in the public’s eye, to higher education, let alone to a particular institution of higher education? Colleges and universities should seek to protect what we would expect them to protect, not venture into registering marks whose primary association with the institution will be when an attorney links the two while drafting a cease and desist letter. 
Colleges and universities should decline to assert ownership in trademarks that suggest a removal of teaching, scholarship, and research activities from the public sphere. Institutions of higher education receive tax subsidies and other preferential treatment precisely because they undertake scholarship and research for reasons that do not translate into return on investment in the quantifiable sense that stockholders of for- profit corporations expect. To a large degree, the people are the stockholders of both private and public higher education, and colleges and universities should not be in competition with them. By parceling out and asserting rights to fundamental aspects of their teaching, scholarly, and research activities, colleges and universities are abusing their historic pact to pursue those activities for the benefit of everyone, not just those who pay a licensing fee for the privilege. 
All of these suggestions beg a common question: when is federal registration of a mark actually necessary?  Certainly the need is strong in circumstances where colleges and universities wish to develop licensing programs involving their names, logos, and insignia. But in other circumstances, the need for federal registration is less clear. For example, is there any reason to deter a medical school or hospital in California from claiming to offer “the future of medicine” to prospective students or patients? I do not think so, yet the University of Pennsylvania’s federal trademark registration for that slogan is likely to have precisely that deterrent effect, if located by attorneys for institutions in California. The University of Pennsylvania may have reason to gripe if Temple or Drexel (both also based in Philadelphia) start branding their medical school using the same slogan, but owning a federal trademark registration for the slogan is not a prerequisite to filing suit for trademark infringement, let alone prevailing in such action. In short, what may be “best practices” for for- profit companies looking to dominate a given market by use of a catchphrase or slogan should not dictate the behavior of colleges and universities. Colleges and universities do not operate in hopes of a “liquidity event” that would entail transferring trademark rights, free and clear, to a new owner.  Most are not start-ups looking to make a name for themselves, nor do all pull “buyers”—or substantial numbers of buyers—from all fifty states. And although the competition between colleges and universities for students increasingly is fierce, institutions’ interest in marketing should not swallow the public’s interest in a marketplace unfettered by excessive and needless rights-staking by institutions supported by, and intended to benefit, the public. 
These suggestions deserve measured consideration by every college and university that claims rights in a trademark. They also merit implementation. Antitrust concerns may prevent colleges and universities from collectively agreeing to play by the rules sketched above, but nothing prevents the development of “points to consider” or other hortatory documentation that institutions could publicly endorse and profess to follow, including, at a minimum, the following:
  • Register only “mission critical” trademarks; 
  • Favor the registration of trademarks with clear or apparent ties to the institution; 
  • Place registration primacy on marks that the institution plans to use well into the future or that present legitimate and natural licensing opportunities; 
  • Seek registration of trademarks for their institutional value, never for their enforcement value; 
  • Decline to assert ownership in, or seek registration of, trademarks that suggest the removal of teaching, scholarship, or research functions from the public sphere.
As part of preparing or endorsing these suggested practices, colleges and universities should make their trademark holdings—whether registered or unregistered—easily publicly accessible in one place on their institutional website, obviating the need for knowledge of the USPTO’s TESS database and how to use it. Such a public listing should be seen as a commitment to transparency, as it would allow the public and other internal constituents the opportunity to learn about the metes and bounds of the college or university as a commercial, corporate entity. Secrecy and obfuscation have no legitimate roles to play in this arena, and a public listing of an institution’s claimed rights likely would discourage the institution from asserting infringement of unlisted “rights,” or infringement of listed rights in situations of negligible confusion and marginal threat to the institution’s interests (e.g., attempts to squelch lewd speech that administrators find objectionable for its potential to call to mind the institution in some way). 
Unfortunately, college and university trademark activity seldom captures the concerted attention of higher education policy groups, likely because of the misguided assumption that the activity begins and ends with athletics. The ties of ICLA—the only industry group that focuses on trademark issues in higher education—to athletic directors likely prevents trademark issues in higher education from attracting more widespread attention and discussion. 
These obstacles must not prevent long-overdue discussion and action aimed at creating sensible trademark norms in higher education. Trademark rights do not have to last forever. Colleges and universities choose which trademarks to register and which to maintain. At present, the choices are many, but the guiding principles are few. It is time to encourage the reclaiming of the public good in higher education, and the release of college and university trademarks that lay claim to important parcels of the public domain, before it is too late