Legal News

University of Southern California wins trademark 'Battle of the SC'

By Jason Siegel

The University of Southern California has defeated a legal dispute with the University of South Carolina over an application for the "SC" trademark.

Earlier this month, the Trademark Trial and Appeal Board, the administrative tribunal of the U.S. Patent and Trademark Office, found that the University of South Carolina's application to register its own version of an "SC" trademark for its baseball team was confusingly similar to two registered trademarks of the University of Southern California, home to the Gould School of Law.

The University of South Carolina, home to the University of South Carolina School of Law, had sought to register an "SC" baseball trademark for use on "clothing, namely, hats, baseball uniforms, T-shirts and shorts," according to the recent ruling. In response, the Southern California filed an opposition, alleging that the mark was confusingly similar to its own trademarks.

"We find that California's registered SC mark and Carolina's Baseball logo mark are legally identical in terms of appearance," wrote a panel of three administrative trademark judges in the recent ruling. "On balance," the ruling continued, "we find that the similarity in appearance between the marks which results from the fact that both marks depict the letters 'SC' and the fact that both marks depict these letters in interlocking form outweighs the dissimilarities between the marks in terms of the stylization of lettering and the different positioning of the interlocking letters."

In a counterclaim, the South Carolina fought to cancel one of Southern California's trademarks on the ground of confusion. But the board ruled against South Carolina in finding that Southern California had priority use.

"The question was whether the University of South Carolina's baseball team's logo, which is an overlapping SC, could co-exist on the trademark record," said John C. McElwaine, a partner at Charleston, S.C.-based Nelson Mullins Riley & Scarborough who represents South Carolina, which is in Columbia, S.C. He said South Carolina had applied for its "SC" logo in 1997 and has been using it for its baseball team since.

He said the school is considering appealing the ruling to the U.S. Court of Appeals for the Federal Circuit.

Scott Edelman, a partner at Los Angeles-based Gibson, Dunn & Crutcher who represents Southern California, did not return a call for comment.

-- Amanda Bronstad

Full post as published by Legal Pad | LA on August 13, 2008 (boomark / email).