Intellectual Property Law

A federal judge sitting in the Eastern District of Louisiana answered this question ?yes,? granting summary judgment of intentional trademark infringement for plaintiffs Louisiana State University, Ohio State University, Oklahoma University, and the University of Southern California against defendant Smack Apparel.  The case is Board of Supervisors of the Louisiana State Univ. et al.  v. Smack Apparel Co., et al., C.A. No.: 04-1593, E.D. La., July 18, 2006.  At issue were t-shirts such as those sporting the scarlet and gray color scheme of Ohio State University, with a reference to seven national football championships, an outline of the state of Ohio and a marking noting ?Columbus, Ohio? on the back.  Similar t-shirts were made in the cardinal and gold colors of the University of Southern California, saying ?got 8?? in reference to USC?s claim to eight national football championships, with an outline of the state of California and a star labeled ?SoCal? on the back of the shirt.  The shirts never technically referred to the universities by name.  Some of the shirts also contained additional graphics or type, including championship trophies and the scores of football games in which the universities played. 

In considering whether the unregistered color schemes were entitled to protection under Section 43(a) of the Lanham Act, the court looked for the requisite secondary meeting needed for a color to be protected, and found that it was present.  The four universities had used their color combinations for more than 100 years, marketing hundreds of items with these color schemes, and garnering millions of dollars of retail sales from merchandise bearing these color schemes.  Id. at 7.  The court then found that likelihood of confusion was established under the Fifth Circuit?s precedent where the marks had been in use for decades and were ?extremely strong,? the color schemes were virtually identical, and Smack?s shirts were sold in retail outlets alongside plaintiffs? shirts, and promoted in the same advertising media.  Id. at 7 ? 11. 

Few courts have addressed the issue of stand-alone color schemes being protectible trademarks.  Did the court get this one right?