Notre Dame Forces Tornado-Ravaged High School to Change Mascot
Depending on your perspective, Notre Dame University’s letter to Chapman High School in Chapman, Kansas is either another attempt by that national sports powerhouse to bully its way over small-time educational institutions, or it’s just an example of a marquee brand protecting its trademark. Whatever your view, it seems clear that at the very least Notre Dame’s legal department has generated a fair amount of bad press for the school.
After being ravaged by tornadoes in 2008, Chapman High School has been facing the unenviable task of rebuilding large portions of its community, and is still picking up the pieces. The high school, “Home of the Fighting Irish,” finally opened a new school building in January of this year. Folks in the community of 1,393 had cause for optimism as they moved on from the disaster that displaced 200 of their fellow residents. Enter the letter Notre Dame University sent to Chapman School District this summer, stipulating that both the “Fighting Irish” and leprechaun logo were federally registered trademarks of the University which Chapman could not use.
This is not the first time a major university has flexed its legal muscles by sending cease and desist letters to high schools that were allegedly using its trademarks. Arizona State University has also successfully changed the mascot and logo of Culpeper County High School in Virginia, and Penn State University has asked a Fredericksburg, Virginia elementary school to alter its logo so that it wouldn’t resemble the “Nittany Lion”. Notre Dame itself has encountered similar cases in the past involving Catholic Central High School in Springfield, Ohio, and Cathedral High School in El Paso, Texas, among others.
Under the Lanham Act (15 U.S.C. §§ 1051–1127), which currently governs federal protection and registration of trademarks, “likelihood of confusion” among consumers is the test for trademark infringement. There are eight elements generally relevant to satisfy “likelihood of confusion”:
1. strength of the mark,
2. proximity of the goods;
3. similarity of the marks;
4. evidence of actual confusion;
5. marketing channels used;
6. type of goods and the degree of care likely to be exercised by the purchaser;
7. defendant’s intent in selecting the mark; and
8. likelihood of expansion of the product lines.
See AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341 (9th Cir. 1979).
There is little doubt that based on purely stylistic evidence alone, universities with federally trademarked mascots and logos have a strong possibility of satisfying these eight elements when bringing claims against high schools that use identical logos or mascots.
However, it seems that most universities take a passive approach to enforcing their trademark rights. University spokesman Dennis Brown said that Notre Dame does not actively seek out such schools, and that they ask administrators at those schools to find alternatives when such cases do come to their attention because unauthorized usage could weaken Notre Dame’s property interests and rights to its federally trademarked words and symbols. After soliciting advice from a school district attorney, it appears that Chapman will bow to Notre Dame’s demands and has begun a contest to pick the replacement mascot.