Friday, October 5, 2007

Arizona State University Alleging Trademark Infringement by High School Team Named the SunDevils

The Newport News Daily had an interesting article today titled “Hey ASU, it's called being generous” (link here) about the efforts by attorneys for Arizona State University to stop a Virginia Beach high school football team from using the name Sundevils for its football team. Similar articles also appeared from The Arizona Republic (here) and from ASU’s own online paper (here).

In a cease and desist letter sent to Salem High School, ASU alleges that the high school’s football team name, the Sundevils, infringes upon ASU’s registered trademark, SUN DEVILS. The Arizona Board of Regents, on behalf of Arizona State University, holds several trademark registrations on the word SUN DEVILS, including for T-shirts and other clothing; for mugs, cups, etc.; and for publications concerning the University. It is interesting to note that the one registration held by ASU which actually covers sponsoring athletic events is SUN DEVIL (no “S” at the end”).

The high school’s president, Donald Robertson, apparently wrote back to ASU arguing that there is no likelihood of confusion between ASU’s mark and the name of Salem’s high school team. The school uses the name as one word, SunDevil (as in the name of the street, SunDevil Street, where the school was built on) as opposed to ASU’s spelling using two words, Sun Devil (a reference to the weather phenomenon). The school’s logo is a red sun, which is far different than ASU’s famous “sun devil” mascot, nicknamed Sparky.

In addition, apparently several other schools use the name or a derivation of SUN DEVILS, including two California schools and one in Colorado.

The article notes that the name Sparky is not trademarked by ASU, but rather actually belongs to the National Fire Protection Association, Inc. for their own Dalmation mascot). With a little coaxing from the article’s author, Dietrich, the NFPA’s president said he would consider (with a slight grin and chuckle) sending ASU its own cease and desist letter.

But given that the SPARKY word mark held by NFPA covers promoting public awareness and understanding of fire prevention and protection, ASU could probably register the same name itself for its own goods and services – if not under §1, then certainly under §2(f) given the notoriety of the name as used in conjunction with ASU’s mascot.

While ASU may have overlooked registering the SPARKY name, they certainly did not overlook getting registrations for the Sparky logo (pictured above) covering the same categories as the SUN DEVIL mark: T-shirts and other clothing; mugs, cups, etc.; publications concerning the University; and sponsoring athletic events. In addition, ASU did obtain a registration for TEAM SPARKY (for sponsoring intramural, intercollegiate and exhibition athletic and sporting events).

While any trademark attorney can appreciate ASU’s position in policing the use of a team name that is much more distinctive than such common team names as Wildcats, Rangers, or Cowboys, one does have to wonder why ASU waited nearly 19 years to take action against the school. Is this really about protecting ASU’s valuable intellectual property or another case of a “brand name bully.” (Click here for a good article in The Southeast Texas Record by John G. Browning titled “Legally Speaking: Brand Name Bullies” talking about the growing trend of big companies wielding their trademark portfolios against individuals and small businesses).

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