Trademark Infringement: It Can Run Both Ways

Sarah Otte Graber & Sean K. Owens, Wood , Herron & Evans, LLP

When people think of trademarks (often simply called “marks”), they typically think of famous brand names like McDonald’s or logos like the Nike Swoosh.  Fraternities and sororities also possess strong trademark rights in not only their names and logos, but also in their Greek letter combinations, slogans, and even color combinations.   As Greek organizations seek to protect and enforce their own marks, they also need to make sure that their members are not inadvertently infringing on the trademark rights of others.

A trademark can be any distinctive word, phrase, design, color, or miscellaneous “thing” (sounds, package shapes, etc.) that identifies the source of a particular product or service.  In the context of fraternities and sororities, trademarks identify not only the source of the fraternal organization services, but also the reputation that often dates back decades and more.  These marks can also identify collateral products that these organizations authorize to be licensed and sold to enhance their revenue stream.

Trademark rights develop simply by using a distinctive mark in commerce.  In other words, as long as an organization is offering its products or services under a particular mark, the trademark rights exist and are potentially enforceable.  The owner of a trademark can prevent other entities from using similar marks in connection with similar products and services as those offered by the mark owner.  Owners of such marks can use the TM symbol to signify their rights and do not need a federal trademark registration.  That said, a federal registration provides a variety of additional benefits that unregistered or “common law” marks do not receive.  These additional rights include a presumption of validity, nationwide rights, and access to various additional remedies in the event of a lawsuit.  Owners of registered marks can use the ® symbol next to their marks.

Protecting Trademark Rights

Once an organization identifies its marks, protecting and enforcing them becomes extremely important.  If a mark is not adequately policed, the owner may lose its rights in that mark.  In other words, the owner would no longer be able to stop third parties from using its marks.  As marks have become more valuable over the years, protecting against such “infringement” has become extremely important.

For example, in 2003, several fraternities and sororities banded together to sue the major shoe manufacturer Converse for trademark infringement.  Converse was accused of selling shoes under its “Greekpak” line of footwear that bore the color combinations and founding years of the various fraternities and sororities that were parties to the suit.  After several years of litigation, the dispute ultimately settled with Converse paying the organizations royalties for the use of their colors, along with various other concessions.

Converse behavior was offensive to the Greek organizations because the use of the organizations’ colors and years, in connection with articles of clothing (which most Greek organizations offer) under the brand “Greekpak” suggested the products were being licensed or authorized by the respective fraternities and sororities.  Because the products were marketed towards young consumers (15 -25 year olds), there was a real risk that those consumers would mistakenly purchase Converse’s products because of the false association created by the colors and years.  Moreover, had the organizations failed to object to Converse’s actions, they risked losing rights to their color combinations.  Without maintaining their trademark rights, any other company or organization could have started offering similar products with the same color combinations.  Accordingly, enforcement for any organization with valuable trademarks is key.

And Avoiding Conflicts with Others’ Trademarks

But, as the saying goes, what’s sauce for the goose, is sauce for the gander.  It is imperative that fraternities and sororities work to ensure that their own members are not infringing on the trademarks of others as well.  This can be achieved through education and simply awareness.

To say that the dissemination of user-generated content over the internet and social media has ballooned in recent years is an understatement.  With this explosion of content, so too has the potential for liability expanded.   The internet, and in particular social media, has become a blessing and a curse for all trademark owners.  It is an arena or medium that can give an organization widespread marketing at hardly any expense.  It allows many, many, MANY people to see an organization’s brand, product offering, message, etc. For the same reason, many people have access to and have the ability to copy an organization’s trademarks.  Contrary to the common belief of most 20-year olds, however, not all content found on the internet is in the “public domain.”

For example, using others’ trademarks without permission to promote a fraternity or sorority event could constitute infringement.  The fact that fraternities and sororities are non-profits does not shelter them from liability.  And, as is the case in other legal matters, if a member is promoting an organization or an event being held by an organization and commits infringement, that liability could extend to the organization itself.  Thus, third-party marks should not be put on apparel (even if given away), cups, bags, flyers, websites, or anything else used to promote or advertise the organization or an organization-associated event.  Similarly, third party marks should not be altered, as altering a mark can make infringement even worse.

While it may be unlikely for third party marks to be posted on an organization’s official website, it is more likely that they will be found on a local chapter’s website or individuals’ own social media accounts.   Members should be made aware that using another company’s or organization’s trademarks in these instances could be an infringement.  Thus, third-party trademarks should not be posted on a fraternity’s or sorority’s official website or other online mediums, including members’ own Facebook® accounts or other social media platforms.

While there are several exceptions that allow for the unauthorized use of third-party trademarks, the safest course of action is simply to prohibit use of third party trademarks unless adequate permission is obtained from the trademark owner.  This will provide the greatest potential insulation from liability and will not expose the organization to claims of infringement caused by the mistaken belief that the use was allowed or “in the public domain.”  Further, setting clear guidelines against third-party trademark use and educating members on those guidelines will help reduce the likelihood of liability arising from a rogue member’s action extending to that organization.

It is important to understand an organization’s own trademarks to ensure that they are well protected and correctly used to portray the fraternity’s or sorority’s true services and message.  Equally so, it is important to understand the protections given to others’ trademarks and to educate members not to use such marks or alter them in any way.  Setting clear guidelines and educating members on respecting trademarks can not only strengthen a Greek organization’s own trademarks, but can eliminate an unnecessary risk.