Southern California Wins Trademark Battle with South Carolina

SC v. SC (Fed. Cir. 2009)

The University of South Carolina (Carolina) was founded in 1801 and is the flagship public university of the state. The University of Southern California (Southern Cal) was founded in 1880 and is a large private university located in Los Angeles. This case involves a trademark dispute between the two universities.

The case arose when Carolina attempted to register its SC-logo and Southern Cal opposed the trademark registration based on its own interlocking SC-logo. [See hats below] Carolina retaliated by moving to cancel Southern Cal's trademark registration of the initials "SC" based on the mark's suggestion of a false association between Southern Cal and the State of South Carolina.

The Trademark Appeal Board (TTAB) sided with Southern Cal in (1) refusing to register Carolina's SC-logo because it was confusingly similar to Southern Cal's logo; (2) holding that Carolina lacked standing to bring the cancellation counterclaim; and (3) finding that the initials "SC" are not unmistakably associated with the State of South Carolina. On appeal, the Federal Circuit affirmed.

Confusingly Similar: The appellate panel first agreed that the TTAB had appropriately held that the SC-logos were confusingly similar despite the lack of any actual evidence of customer confusion. (South Carolina did not appeal the Board’s findings that the marks were legally identical.)

Regarding Southern Cal's registration of the initials "SC," the appellate panel rejected the TTAB's finding that Carolina lacked standing, but affirmed the summary judgment because Carolina had not shown a genuine issue of material fact for trial.

Standing in a Cancellation Proceeding: A party damaged by a registered mark's "suggestion of a false association" has a right to file for cancellation of that mark. To have standing, the party must also show a "real interest" in the proceeding and a "reasonable basis" for the belief that the mark has (or will) cause false-association damage. The Federal Circuit found that Carolina had met this test of standing because it sold goods bearing the same mark.

Standard for Cancellation based on False Association: "To prevail on a Section 2(a) Lanham Act claim for cancellation based on false association, a party must show that the challenged mark is 'unmistakably associated' with another person or institution." Here, Carolina provided evidence that the public does associate the initials "SC" with South Carolina. However, that evidence is insufficient for a false association claim because "SC" also refers to "many entities aside from the state."

Indeed, South Carolina, in the context of another issue, submitted evidence showing that at least sixteen other universities and colleges represent themselves as "SC." In light of this evidence, South Carolina did not satisfy its burden on summary judgment. Even drawing all reasonable inferences in favor of South Carolina, evidence showing that the initials "SC" could refer to the State of South Carolina does not create a genuine issue on whether the initials uniquely point to the State.

Affirmed

As a native of South Carolina, I am regularly confused by uses of “SC” that refer to non-South-Carolina entities.

39 thoughts on “Southern California Wins Trademark Battle with South Carolina

  1. What does this decision mean for South Carolina’s use of their SC logo? It appears to me that South Carolina hasn’t lost the right to use the logo, they just struck out in their effort to block Southern Cal from using it. South Carolina continues to use their version of the SC mark and I for one am glad because it’s a great logo (much better than the Southern Cal version) and has become very popular with South Carolina fans. Maybe South Carolina and Southern Cal can come to an agreement like they did in the early 1980s to share the use of “USC”?

    Oh, and to the poster from “Moo U”, your purple and orange hat reminds us of some of the bad fashion choices of the 1970s and ’80s. Methinks you are here because you think it’s an opportunity to gloat or you have a massive insecurity complex.

  2. With respect to flagship universities, to consider Clemson University the flagship school is laughable. Carolina has a larger alumni base, more students, professional schools, and multiple satellite campuses across the state – as well as several highly ranked academic programs. Declaring Clemson the flagship university based off of one magazine’s rankings does not hold much weight, in my biased opinion.

    Go Gamecocks!

  3. I grew up in Southern California and now work in Northern California. Every South Carolina logo I have seen (and I have seen a few because I worked with a South Carolina grad) has immediately been translated to USC in my mind. It’s a good thing that they are across the country from each other, or there would be a whole lot more confusion.

  4. Recognizing that this comment bears no relationship to patent law, as a native of South Carolina myself, I’m compelled to address your categorization of the University of South Carolina as the “flagship public university of the state.”

    In view of U.S. News and World Report’s ranking for Clemson University of 22nd, versus South Carolina’s rank of 55th, I believe the only basis for such treatment as a “flagship” is that USC utilizes the name of the state. While I’m sure that constitutes a creative achievement for the Gamecocks, the flag properly belongs to the Tigers.

    link to colleges.usnews.rankingsandreviews.com

    Go Tigers!

  5. Lots of clarifications for the record:

    1) South Carolina only started using that logo in 1997.

    2) Southern California has had a typed form (no specific logo) registration for “SC” since 1994. Think “IBM” or “MIT” without any special logo.

    3) The TTAB considered (a) the typed form from Southern California, (b) the football logo from Southern California (above) and (c) the baseball logo from Southern California (which is even more similar to the Carolina proposed logo).

  6. That isn’t SC’s (Trojans) baseball cap. Our baseball logo is similar, but much more awesome! Fight On! Sorry south car. but you lost again, maybe you should all wear visor’s like you ball coach.

  7. “Don’t call Southern California “Southern Cal”.”

    Sorry, my mistake, I should have called it “So Cal.”

  8. I’m from upstate NY. Whenever I hear USC I think of South Carolina (unless I hear the words film school)

    Whatever, it won’t stop USC from using the logo in the Southeast as they have been using it locally for longer than California has had it registered.

  9. One more note–while the CAFC opinion does indeed state that South Carolina did not appeal the TTAB’s finding that “the marks were legally identical,” this statement only pertains to the South Carolina logo and Southern California’s standard character registration for “SC”. The TTAB did NOT find that the two logos were legally identical. And the CAFC opinion only addresses the likelihood of confusion between the logo South Carolina sought to register and Southern Cal’s “SC” standard character mark (i.e., just the letters, no logo).

    Also, lest anyone be further confused, the fact that two marks are “legally identical” doe NOT, ipso facto, mean that there is a likelihood of confusion.

  10. The TTAB found a likelihood of confusion with respect to two Southern Cal. registrations (the ‘953 and ‘137 registrations) and Southern Cal’s common-law rights. The ‘953 registration is for the letters “SC” without any type of logo or design elements. The ‘137 registration is for the logo shown above.

    In affirming the TTAB decision, the CAFC only addresses the ‘953 registration (the non-logo SC registration). At no point did the CAFC address whether or not the two logos are “confusingly similar.” Of course it did not need to, as affirming merely on one of the three grounds used by the TTAB to sustain the opposition was sufficient.

  11. So can Southern Cal stop South Carolina from using the “SC” or will South Carolina’s prior use give them common law rights to continue using it. Just curious how this all ends up considering the article said 16 universities identify themselves as “SC.”

  12. Thus, as the TTAB held, and South Carolina admitted, the marks are legally identical. So this decision does not really rely on a conclusion that the two logos are confusingly similar.

    Hmmm. Did or did not the appellate panel agree that the TTAB had appropriately held that the SC-logos were confusingly similar?

  13. Mine too Professor Crouch, now that I think of it. Judge Wilken seems all northern CA. My friends from Stanford celebrate football wins over USC like Mizzou celebrates basketball wins over KU. That just makes this opinion more confusing to me.

  14. “The two logos are confusingly similar because the trademark examining attorney said so.”

    Umm…also not true. The examining attorney allowed the application to be published for opposition.

  15. Contrary to what some here think, this decision is sound. For starters, Southern California has a registered mark for the characters “SC” alone (i.e., no logo, design, etc.). Thus, as the TTAB held, and South Carolina admitted, the marks are legally identical. So this decision does not really rely on a conclusion that the two logos are confusingly similar. Rather, South Carolina’s SC logo is legally identical to Southern California’s registered mark for the characters “SC”.

    As usual, it would be best for people to actually read the decision before commenting on it.

  16. Kevin Wrote: Did anyone else notice that this opinion was written by the “Honorable Claudia Wilken, District Judge, United States District Court for the Northern District of California, sitting by designation.” Who also attended Stanford for undergrad and Berkeley for her J.D. (nice education).

    Crouch Writes: In my experience, a Stanford education tends to bias against ruling for USC (Southern Cal).

  17. Did anyone else notice that this opinion was written by the “Honorable Claudia Wilken, District Judge, United States District Court for the Northern District of California, sitting by designation.”

    Who also attended Stanford for undergrad and Berkeley for her J.D. (nice education).

    That’s a lot of CA!

  18. “The University of South Carolina (Carolina) was founded in 1801 and is the flagship public university of the state.”

    Correction. The flagship public university of South Carolina is Clemson University.

  19. “Except that here there the Examiner does not need to provide any evidence supporting the conclusion, which is exactly the opposite of what is required in the context of utility patents.”

    Huh?

    Other than that, great comment!

  20. “Those two logos aren’t even close to confusingly similar. ”

    Exactly.

    Word.

    One of our regular trolls says: It’s just like when an invention is obvious because the examiner says so.

    Except that here there the Examiner does not need to provide any evidence supporting the conclusion, which is exactly the opposite of what is required in the context of utility patents. Other than that, great comment! LOL.

  21. Oh come on, if I saw only the logo on the right, I would have immediately thought of the USC. I am not a sophisticated sports fan, but I’ve heard of the Trojans and would have thought of them with that design. It seems like the logo is close enough that South Carolina should have come up with some other design. Why risk all the legal costs when it should be easy enough have a new design made?

  22. The two logos are confusingly similar because the trademark examining attorney said so. And because the TTAB, and court, agreed.

    It’s just like when an invention is obvious because the examiner says so. And the BPAI, and the Federal Circuit, agree.

    Same difference.

  23. Seems like a pretty weak decision. Those two logos aren’t even close to confusingly similar. The South Carolina version could just as easily be “CS” as “SC”.

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