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Can You Own a Color?

Can You Own a Color?
March 23, 2011

When Syracuse University quietly filed for a federal trademark on the word “orange" for use on apparel in 2006, nothing seemed to stand in the way. After all, a similar but broader filing it had made two years earlier was being considered, and Syracuse hadn’t heard a whisper of protest. Orange is the university's sports nickname and team color.

Late last year, though, several colleges that use orange as one of their main colors for sports, marketing, and the like caught wind of the trademark filing. Feeling threatened -- and in many cases believing that Syracuse's assertion of trademark applied to the color, as well as the word -- they moved to protect their own. Since February, seven colleges have filed varying forms of opposition with the U.S. Patent and Trademark Office. At least two more have communicated directly with Syracuse about the trademark application, but did not file formal opposition.

But rather than incite competition, with these institutions duking it out for exclusive rights to "orange," Syracuse's application may instead result in an alliance among them. All of the colleges that responded to interview requests insisted that correspondence with Syracuse and among themselves has been 100 percent amicable.

“Orange is particularly hot in a lot of ways in fashion and the collegiate licensing area and all of those. Inevitably, there’s going to be some tension in that,” said Todd Simmons, interim vice president for university relations and marketing at Oregon State University, which spoke to Syracuse but did not file a challenge with the trademark office. “The realization in all of this is that we’ve all got our own brands and our own audiences, and there probably isn’t going to be a lot of overlap between them.”

It might sound silly that colleges from Boise State University to Clemson University are asking each other, “Can’t we all just use the color orange and get along?” But colleges tend to take trademarks seriously -- and this isn’t the first time a color has been at issue. Boise State trademarked the iconic blue turf on its football field. And two years ago, a federal court of appeals ruled that the use of “color schemes along with other indicia” that are strongly associated with a college can violate trademarks if they confuse the consumer.

Whatever resolution these colleges reach will ensure no such confusion is possible, said George R. McGuire, Syracuse’s lawyer (who is also a Syracuse alumnus and adjunct). McGuire, who specializes in intellectual property law, including trademarks and patents, said the agreements will not change the way any of the colleges market themselves – it will simply document their right to do just that.

“They want to make sure we’re not going to try and stop them from promoting their teams,” McGuire said. “We’ve given them the assurances that no, we absolutely have no intention to do anything like that.” (Syracuse does, however, intend to enforce its rights against “Joe Blow T-shirts," he added.)

According to the Patent and Trademark Office, the colleges that filed either a formal opposition or a request for extension (in the event that they want to file an opposition at some point) are the University of Tennessee, Boise State, University of the Pacific, Oklahoma State University, Clemson, the University of Florida and Auburn University. Officials at most of those institutions agreed to interviews; Oklahoma State and Tennessee simply acknowledged that they are involved and offered no further comment. Florida directed Inside Higher Ed to its licensing manager, who did not respond to multiple interview requests.

Colleges that did respond were quick to sympathize with Syracuse, insisting that the conversations have been collegial.

“We all recognize what they’re trying to accomplish,” said Tim Bush, Auburn’s attorney. “Auburn, having just won the national championship, is fully aware of infringers.” Auburn filed a formal opposition; it has a mark on the phrase “All Auburn All Orange,” which it prints on clothing and which would certainly be affected by Syracuse’s trademark.

Clemson -- which is actually in the midst of a branding campaign that’s promoting the use of a broader range of colors -- initiated the discussion between Syracuse and the others. “Our colors are orange and purple. They have been for quite a long time, so that is a part of our identity,” said a Clemson spokesman, John Gouch. “We would not want to be restricted in any way from using that color because it is so important to what we’re about. That’s the concern [our lawyer] relayed to Syracuse, and that’s why he has been in contact with other schools and he’s relayed those concerns to Syracuse.”

While the trademark filing has nothing at all to do with the color orange -- just the word -- that hasn’t alleviated colleges’ anxiety about it. (If the trademark did go into color, it would get even more complicated. Yes, there are various shades of colleges’ orange.) But McGuire thinks some of the initial confusion about color vs. word has died down since he has spoken directly to colleagues at the other universities.

There is a slight irony in the fact that in 2004, three years after it dropped the "men" from its “Orangemen” mascot, Syracuse registered a trademark on the word orange for use in “educational and entertainment services,” including sporting events, course catalogs, its website and other spots where the university uses the word in connection to itself. But, despite the fact that it was far broader than the one that’s causing the current fuss, not a single college inquired about it, McGuire said. (It is unclear whether the other universities were even aware of that filing.)

This time around, Boise State got an extension but ultimately did not end up filing an opposition. “Syracuse has indicated that they didn’t file this to stop any of us from using our marks,” said Rachael Bickerton, Boise State’s trademark licensing and enforcement director. “We’re comfortable that we will be able to reach a resolution without having to spend money on attorneys opposing it.”

Pacific took the same route, though its student athletics “spirit section” calls itself the Orange Army, and members have worn T-shirts with the name printed on them to games. But Richard Rojo, executive director of Pacific’s marketing and communications office, said he did not anticipate any quarrels with Syracuse. “Our approach right now is to just work directly with Syracuse’s counsel and see if we can just establish an agreement that serves University of the Pacific’s ability to use the color orange and the term orange,” Rojo said. “We don’t expect that Syracuse is going to have an issue with that…. There are other issues that they’re trying to deal with.”

McGuire said that negotiations are coming along and that Syracuse expects to have agreements worked out within the next month or two. The resolution, which has been drafted around a past (but too institution-specific) version Tennessee wrote during a separate, previous dispute, will indicate that these universities can work around Syracuse’s trademark so long as they make clear that their products are related to their own institutions – not to Syracuse.

And, of course, some can't help but see the humor in all this.

“The only unfortunate thing about this,” McGuire said, “is that Syracuse had to choose a color as its team name.”

 

 

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