Abstract
Whether displayed on a school sweatshirt, a baseball cap, or the increasingly ubiquitous staple of everyday wardrobe — a face mask — a school's name and logo are among its most valuable assets. The name and logo of a school and its athletic teams convey the school's brand, with the school's goodwill and reputation at stake. However, with mask sales now booming, there is an increased risk for the proliferation of the unauthorized sale of masks bearing a school's name or logo. Thus, even though colleges and universities across the country are in flux with their reopening plans, with many on‐campus activities, including collegiate sports, temporarily postponed, schools should remain vigilant about protecting their brands during the pandemic.
One way schools can protect their brands is by implementing and enforcing a robust trademark licensing program. Under such a licensing program, a third party typically pays a licensing fee to the school in order to sell branded gear using the school's trademarks, such as its name or logo. In exchange, the school agrees not to sue the licensee for using the school's trademarks. Although there may be concern about brand owners profiting from the sales of what many consider to be an essential health and safety item right now, some schools have only agreed to the licensing of face masks bearing their trademarks for commercial sales if a charitable component is involved (e.g., a portion of the proceeds funds scholarships).
Despite the existence of collegiate trademark licensing programs, some vendors nevertheless engage in unlicensed sales. By way of example, according to a newspaper report in May, the University of Iowa's Trademark Licensing Program sent warnings to individual vendors offering Hawkeye‐branded face masks for sale on the online marketplace Etsy. Some may think a large university shouldn't be concerned about competition in sales from mom‐and‐pop vendors, but there are also other quality control concerns involving masks, which can require elevated insurance compared to other promotional materials. Thus, it is in a school's best interest to ensure any materials bearing the school's name or logo, including masks, meet acceptable quality, fair labor, health, and safety standards, and that schools police the sale of unlicensed goods.
Accordingly, schools should have clear, written guidelines ensuring consistency for the licensing of their trademarks. Many colleges publish their trademark licensing policies on their websites. Any existing licensing policies should be updated to cover COVID‐19‐related goods, such as face masks. For clarity, consider including a separate section specifically addressing masks, and list any vendors already approved by the school for the production and/or sale of masks. For potential licensees, the policy should specify the process for requesting such approval. (Many colleges and universities use an outside licensing agent, such as the Collegiate Licensing Company, to manage licensing requests.) There should also be instructions for how school departments and student organizations can purchase or create branded goods, and the school's policy can recommend that internal entities wishing to order masks first sample the product to ensure compliance with school quality, health, and safety standards.
Additionally, the policy should incorporate all other best practices applicable to the usage and licensing of the school's trademarks even outside a pandemic. And specifically address the following key points in the policy:
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List all of the school trademarks, including any permissible abbreviations or nicknames for the school's name (visual examples are usually helpful).
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Outline any applicable brand identity standards governing color, typeface, size, resolution, and appearance of graphic elements for school trademarks.
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Provide clear guidance regarding how to report misuse / counterfeiting of school trademarks, including contact information for the school's licensing or legal representative.
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Indicate the dates when the policy became effective and was last updated.
Any licensing agreement entered into between the school and a vendor should include quality specifications, identify which products and trademarks are covered under the agreement, and require the licensee to state on the label that it has a license from the school to manufacture the goods.
To further surveil against unauthorized uses of their trademarks, schools can enroll in “watch” services, such as those offered by professional trademark search vendors Corsearch and CompuMark. These services are relatively easy and inexpensive, and they help brand owners determine if anyone else is registering a similar trademark by monitoring new applications filed with the U.S. Patent and Trademark Office. Schools can also set up brand‐registry accounts, which allow brand owners to monitor and report unauthorized uses of their trademarks (at the time of this writing, the service is free on Amazon).
In sum, colleges and universities can protect their trademarks from being used by unlicensed vendors on goods like masks during the pandemic by implementing and/or enforcing strong trademark licensing programs, as well as by enrolling in watch and brand‐registry services to monitor unauthorized uses of their trademarks.
About the author.
Zinnia Faruque, Esq., is an attorney at Saiber LLC in Florham Park, New Jersey, whose practice includes trademark enforcement and protection. Email zfaruque@saiber.com or go to www.saiber.com.