Cease and Desist: Finding an Equitable Solution in Trademark Disputes Between High Schools and Colleges

IntroductionIn the summer of 2010, the relationship between Florida State University and Southeast High School became national news when the University threatened to file suit against the high school over alleged trademark infringement.1 Despite decades of cooperation between the schools, Florida State asserted that the high school was infringing on the University's trademarked "Seminole" logo.2 The resulting media coverage brought the recent proliferation of trademark disputes between high schools and colleges into the spotlight3 Unlike many of these disputes, however, in this case, Southeast High School chose to fight back, asserting that they had just as much a right to the Seminole logo as Florida State.4 Ultimately, the stance was effective; Florida State settled with Southeast, allowing the high school to continue using the Seminole logo at a reasonable cost.5Although these disputes often generate negative press, it is not unusual for a collegiate institution to assert its trademark rights against a high school through a Cease and Desist Letter ("CD further, the tetter sets forth the legal claims being made.7 Additionally, the letter asks that the offending institution terminate usage of all trademarks claimed by the owner.8 Often, the collegiate institution claims that failure to protect against potential infringement could result in the loss of their trademark.9Upon receiving a C&D tetter, a high school is often forced to decide between termination or litigation.10 On the one hand, termination, although not inexpensive, provides cost-certainty and the assurance of finality.11 On the other hand, the uncertainty in cost, duration, and finality of litigation often forces a high school to abandon any claims to the trademark at question.12 Furthermore, a collegiate institution has very little to lose in asserting trademark rights against a high school, and the high school has little to gain in a lawsuit other than continuing to use that mark.13 In these disputes, a university can gain acknowledgement and demonstrated control of trademark rights, whereas the best case for a high school is to maintain the status quo-using the logos, nicknames, and other identifying insignias at no cost.14The practical consequence of this unequal bargaining power between collegiate institutions and high schools is that both parties presume that the collegiate institutions are correct in asserting their trademark rights, and that the high schools are infringing on those rights.15 This prevalent presumption, however, has never been validated in court.16 Despite significant successes against small businesses, collegiate institutions have never litigated a trademark dispute against a high school defendant.17 Applying the standards that most Courts use in analyzing trademark disputes, it is less than clear that a collegiate institution could prevail against a high school defendant in such a suit.18This Note analyzes trademark disputes between colleges and high schools and argues that, to create equitable settlements that benefit both parties, there should not be a presumption favoring collegiate institutions.19 Part I provides an introduction to trademark law, and focuses specifically on how courts analyze trademark disputes.20 Part II discusses the link between the increased popularity of collegiate athletics and the rise of collegiate trademark rights.21 Part III highlights the positive case law that has fueled a quarter-century of expansion and assertion of collegiate trademark rights.22 Part IV then uses the often cited Polaroid factors to analyze a dispute between a high school and college, and argues that collegiate institutions may be asserting more rights than they could actually claim against a high school defendant.23 Finally, Part V argues that since the outcome of a lawsuit is unclear, both collegiate institutions and high schools should rethink their positions, and this Note ultimately proposes a uniform settlement that would benefit both collegiate institutions and high schools. …