ENFORCEMENT OF TRADEMARKS

Robert E. Manley, Manley & Burke

Phi Delta Theta International Fraternity filed suit against the members of a former Phi Delta Theta chapter that broke away and began operating under the name Phi Delta Alpha. Aside from their Greek letters, Phi Delta Theta has had a coat of arms since 1898. After the breakaway, the former members continued to use Phi Delta Theta emblems that were registered with U.S. Patent Offices as trademarked.

The controversy that led to the breakaway chapter sterns from incidents in 1999 and 2000 where members of the chapter required hospitalization because they consumed excessive alcohol in connection with activities of the chapter. As a result, Phi Delta Theta suspended the charter of its Virginia Beta Chapter at the University of Virginia campus.

[Trademarks may have substantial monetary value worthy of the cost of protection. The International Licensing Industry Merchandisers’ Association (LIMA) estimates the licensing of trademarks produces over $180,000,000 in annual royalties to American Colleges and Universities.]

The enterprising members of the chapter, with alumni encouragement, created a new local fraternity. Because the encouraging alumni had control of the house corporation that owned the house they continued to operate under the name of Phi Delta Alpha using Phi Delta Theta trademarks.

Phi Delta Alpha was using Phi Delta Theta  trademarks in publications that they were mailing to alumni and continued this practice for a substantial period of time after the charter had been suspended by Phi Delta Theta.

Finally, Phi Delta Theta filed suit on March 5, 2002, to ask the court to enjoin the unlawful use of the trademarks

The suit in the United States District Court for the Western District of Virginia captioned Phi Delta Theta International Fraternity v. Phi Delta Alpha and Virginia Beta Incorporated.

The lawsuit challenged the unlawful use of registered trademarks and the use of the trademarks of Phi Delta Theta under common law and unfair competition. There was also the charge of conversion of the trademarks and violation of Virginia statutes that prohibited conspiracy to injure another in a trade, business or profession.

The matter was settled by agreement within a few months. The written Settlement Agreement provides, among other things, that its terms shall remain confidential.

The fact that the settlement occurred so swiftly illustrates that it can be economical to go to court to enforce trademarks. What is more, any fraternity that does not effectively enforce its trademarks may lose the right to enforce the trademarks because of its failure to enforce.

The most common infringement of trademarks is perpetrated by vendors who use them to produce commercial merchandise that they sell near campuses. Greeks need an aggressive posture to enforce their trademarks. Greek organizations should be just as aggressive to use the civil lawsuits to enforce their trademarks as they would to use the criminal process to prosecute an armed robber.