• An Ivy League Brand: Trademark Infringement in Academia
  • July 17, 2013 | Author: Jamison B. Arterton
  • Law Firm: Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. - Boston Office
  • As any recent college graduate knows, upon graduation you join an alumni network that carries with it a certain perception.   While your GPA, field of study and extracurriculars are key in obtaining that all-important first job, your tuition payments during your college stint have also bought you access to a brand.

    Trademarks in academia are big business.  Academic institutions live and breathe by their brand reputation, particularly in the Ivy League.  Not surprisingly, these institutions are ever-ready to vigorously defend their trademark rights, particularly where a programmatic relationship is implied by such infringement. As the New York Times recently reported, Yale University took on Yale Academy, a small preparation school for college entrance exams with locations in suburban shopping malls in New Jersey, Pennsylvania and Delaware.  Yale Academy claimed that it chose its name by combining the names of its owners, Mr. Yang and Ms. Lee.  Notably, Yale Academy’s logo also contained the same blue and white color scheme as that of the famous university.  Needless to say, Yale University was not pleased about the coincidence and filed suit in Federal District Court in New Jersey in May.  The case recently settled and Yale Academy agreed to change its name to Y2 Academy in August, although it appears to have already begun the process of rebranding.  Yale Academy recently altered its name on its website and noted that “[d]ue to business expansion and Trade Mark registration, Yale Academy will be replaced by Y2 Academy from Sep. 1, 2013. But all academic systems, teaching staff, and ownership remain unchanged. Y2 stands for the 2nd generation of Yale Academy.”

    Yale University is not the only Ivy League institution to take potential trademark infringement seriously - even where small-time institutions are involved.  Harvard University has previously successfully challenged academic institutions in Korea and India carrying the Harvard name.

    As noted in the recent New York Times article, while the Yales, Harvards and Browns of the world may have an easier time defending their trademark rights, academic institutions that share their name with the name of their location (e.g., Princeton University, Columbia University, Stanford University, etc.) have a more limited ability to protect their trademark rights.  While universities, such as Princeton University, have successfully protected their trademark rights in the past, such settlements often require the Ivy League institution to compromise.  For example, Princeton University previously entered into a settlement agreement with Princeton Review after challenging the test prep provider’s use of the Princeton name.

    The bottom line is that, even in the Ivy League, a weaker trademark that contains a geographic or descriptive term limits a trademark holder’s ability to protect their mark and prevent its use by others.