I grew up in a smaller town in MD (Damascus) where the High School football is a big part of the community (2015 and 2016 Div. 3A state champs and 5 since 2003), and our mascot is the Swarmin' Hornets. I always knew it was close to the GT mascot, but I didn't realize it was actually owned by GT and leased to DHS under the conditions that the logo can only be used by the high school on school property, and that the hornet is adapted to have green and yellow stripes with a large 'D' on the chest, rather than black and gold and no lettering that GT uses. I've also always thought it looked a little more 'cartoonish' too (you can see both on the last page of the embedded pdf in the below article).
Recently the Washington Suburban Sanitary Commission came to town to repaint the water tower, visible from the high school, and the design was originally supposed to have the word "Damascus" across it with the hornet logo below. GT has now apparently used their copyright of the logo to block the hornet from being painted on the water tower.
A lot of the town is upset about the fact that GT is affecting a small town hundreds of miles away since most people don't know it's owned by GT. I would've liked to see it, but I'm pretty indifferent because I understand that it is their right to do so. Just thought it was an interesting chain of events going on.
http://www.wusa9.com/news/local/maryland/georgia-tech-rejects-pleas-from...
Comments
From the GT letter it sounds like they weren't asked about it until very late. Unfortunately, these trademark/copyright issues can be complicated and so the default will always be no until convinced otherwise.
But it is unfortunate in this instance as it seems like a lot of local work and fundraising will have been wasted.
Yeah, they gave a specific set of rules on how to use the logo. Chances are they would have allowed it if given proper time to review it internally to make sure it's acceptable and not being used in a way that makes them look bad. Can't have people using your logos all willy nilly.
Money would probably do the trick...
I doubt a small town/high school would be able to pay enough to make it meaningful.
Shameful. All I could think of was this response from the fake tech to DHS.
Shouldnt Georgia be paying Virginia for use of the word "tech"?
Just Thinking out loud here.
Agree.
Virginia Tech was founded in 1872.
Georgia Tech was founded in 1885.
It checks out.
Trademark law....it'll get after ya.
Georgia Tech is super protective of their trademarks. The fencing club at Georgia Tech isn't even allowed to call themselves the Georgia Tech Fencing Club. They have to officially go by Yellowjacket Fencing under threat of litigation. It struck me as downright bizarre that a university would react that strongly against one of its rec sports clubs given the support we received from rec sports at Tech.
As a former member of the Academic Competition Organization at Virginia Tech and of what we tried to call the Hokie Homebrew Club, I can assure you our trademark and licensing office is just as bulldogish.
I was being specific to rec sports clubs since they have a slightly elevated status. I know VT is pretty restrictive with ordinary student clubs.
They have to be. It's why the "Mouse" is so protective of its trademarks and copyrights and why Games Workshop has shifted from using "Space Marine" and "Imperial Guard" to "Adeptus Astartes" and "Astra Militarum" -- if you fail to defend your I.P., trademark or copyright even once you risk losing it.
GW failed to create models and likenesses for a number of items in its Warhammer 40,000 universe and stuck with the more generic terms, which have been use in other regards since the 1950s or earlier. TL;DR, they tried to sue an American recaster for infringing on their I.P. for creating likenesses of things they hadn't... and lost. The last few years the company has been rebranding everything into a means that can be trademarked.
It sucks for this town, but it's what GT has to do to protect their trademark.
I am glad you made that comment because it explains why I recently looked at GW's website and nothing seemed the same.
RATS!
In all fairness tech is pretty strict with their logo and mascot too, I know the dairy club had to change the shirts they'd had for years because it used the hokie bird differently than the trademark allows and the old window stickers that would have the majors written across them aren't sold any more because it defaces the VT
Seriously? I mean, I never bought one because I don't need to advertise the fact that I'm an engineer (my appearance and mannerisms already do more than enough of that), but I still figured they had their place among the rest of the VT merch.
Yet Campus Emporium still sells the same stickers with "Football" , "Baseball", and "Volleyball" , "Soccer", "Swimming and Diving " through the VT... Are you implying that only the Majors across the VT defaces it? My wife is a Hokie Engineer and she is very proud to have the VT Engineering sticker on her car. To each their own if they do or don't prefer to advertise that, but if the majors 'deface' the image, then what are the athletic teams doing to it? I get it's the official VT "athletics" logo, but that shouldn't be exclusive to official athletic use only. Can't non-athletic alums be proud to display the most widely recognized and identifiable logo of their university, too?
Academia can use the VT logo but the licensing dept has severely cracked down on how you can use any of the University looks. If you're going to use the VT or Hokiebird it has to be the full logo and not cropped in any fashion. And you are only allowed to use the VT or Hokiebird. The Fighting Gobbler and stacked VT are prohibited. I've also personally run into issues trying to use the pylons for official school sanctioned alumni purposes.
But... When it comes to athletics, they can pretty much do whatever they want. Whit is the one pushing for the standardization of our brand but he's also the one who tends to violate it the most. Just what it is.
I can say that is completely untrue when it comes to athletics. In 2013 or so, they passed around a memo to the coaches, equipment rooms and administrators on what is and isn't ok to use. It included all the specific colors, logos and patterns. We had to pack up old jerseys and and uniforms because we weren't allowed to wear them anymore. Most of the teams had to order new uniforms for the next year.
1.) I understand why GT is putting up a fight. They're actually legally obligated to. If they don't fight now, then if someone else infringes on their trademark later, GT doesn't have much ground to stand on in that fight.
2.) That being said, why is Damascus even dealing with GT? Their hornet design isn't just a straight copy with different colors. Why couldn't they have gotten someone to just draw a new one that doesn't look like GT? Unless that's what originally happened, but then there was some lawyer-ing back then because GT thought it was too close.
What about other colleges who use the "yellow jacket" mascot? Other college and university examples include the American International College, Baldwin-Wallace University, Black Hills State University, Cedarville University, Defiance College, Graceland University, Howard Payne University, LeTourneau University, Montana State University Billings, Randolph-Macon College, University of Rochester, University of Wisconsin–Superior, West Virginia State University, and Waynesburg University. Did GT have it first? I am thankful that there will always be only ONE school with the HOKIES nickname. Think of the SEC...at least three SEC teams are the Tigers.
You actually have to compare the actual marks. Here are the marks of GT and the HS:
The overarching legal test to determine trademark infringement is "likelihood of confusion." Would an average consumer likely confuse a product with one mark as a product of the other. More specifically, if you saw a t-shirt with the Damascus bee, would you think this was a product of GT? In all honesty, Damascus would likely win.
It's strange that Damascus entered into a license agreement in 2014 (why now?), unless GT threatened something. If Damascus had enough money (most cities and towns do not), they could pursue this legally. But, that's not likely.
Wouldn't the existing agreement already in place essentially mean that the high school acknowledged the application of the copyright, to begin with?
First, it's trademark, not a copyright (everyone confuses the two). Trademarks identify products relating to a company or organization (e.g., McDonald's Arches, Nike Swoop). Copyrights protect artistic pieces of work (e.g., paintings, songs, stories, etc.).
The purpose of the license is to allow the Damascus H.S. to use the trademark for their benefit in a clearly defined way, and in exchange GT wouldn't sue. The license only specified clothing, merchandise and other similar things. The license did not permit the use of GT's logo on a water tower. The lawyer for Damascus should have made the license more fair, including a large carve-out for permission to use the logo within the town of Damascus (or something similar).
If I understand your question, you're wondering if signing the license would set a presumption that they infringe on the GT logo. Or, that Damascus has already assumed that their bee is identical or likely to confuse. I don't think that would matter at all, if there was a lawsuit. The "likelihood of confusion" test does not take into the subjective mindset of the infringing party, whether the infringing party thought they were infringing the logo or not. So, I think the license would be irrelevant.
Thanks for explaining all of that. I would have liked to see it happen, but I understand and it all makes sense, it's just interesting to me that something that most people dont equate with GT is being regulated so heavily. At the same time though, from GT's perspective it makes perfect sense.
I agree that they probably should have originally worked in using the logo anywhere in town into the contract with GT, but also at the time painting the tower wasn't being talked about and you can really only buy anything with the hornet at the school so I can see why it also wasn't considered. they are appealing it, but the next time the tower will be painted is something like 2044, so it could be irrelevant. Might end up with some amendments to the licensure though I guess.
Also, thanks for correcting me on trademark vs. copyright. I ALWAYS mix them up and my wife (who is an attorney) is ALWAYS correcting me about it..
No problem. IMO, this is definitely a situation of David vs. Goliath. But instead of fighting back, David is trying to take the path of least resistance and prevent wasting all the taxpayers' money. It sucks for Damascus, and really, GT is being a bully.
Bully?
That trademark looks A LOT like theirs, just reversed and in different colors.
GT has the right to protect their trademark. The high school should have consulted with GT if they wanted to move even a little outside their agreement.
Frankly, I think they could let the water tower slide just with an update to their agreement. But I do see that particular trademark as being quite similar to that of Georgia Tech.
It's not just reversed and different colors.
The Damascus mascot has thicker antennae, different shaped wings, two rows of teeth, an extra band of color in the stinger, and doesn't bulge on the darker colored bands on the bottom half.
Apparently, GT has the trademark on a flying insect with a stinger in that particular curved stance.
If Damascus was going to be dealing with the hassle of licensing from GT, their logo should basically just be the yellow jacket with green stripes.
Mmmmmm, OK.
Looks pretty similar to me. It's a hand drawn yellow jacket with similar eyes, stripes, antennae, arms with bands, and fists. It is reversed, in different colors, and has a 'D' on it.
If you reversed it, removed the 'D', and put it in yellow and black, it would be a passable version of the GT mascot. They can certainly challenge in court if they wanted.
Like I said, though, seems like GT would let them paint it on their water tower.
Maybe Cheerios should sue Georgia Tech?
That's not the legal test for trademark infringement.
If you saw the Damascus hornet on the water tower, would you think that it represented GT? If you can convince a jury yes, then it's infringement.
No, I wouldn't.
But if my sister-in-law (a non-sports-fan) drove through that town and saw it, she might.
I think GT could be a little less heavy-handed, but I do see that those logos are similar.
650 miles away from ATL? on a water tower? in a small town? where the intended targets are the people that live in, work in, and pass through Damascus? -- context matters -- It's a hard argument. Not impossible, I guess.
I'm not a trademark lawyer, but it is registered to Ga Tech.
If you put a Hokie Bird on a water tower in California, would the trademark registration not protect it?
If I hand draw someone else's trademark, does it lose it's protection?
I think we can criticize GT for being heavy-handed, but they did register this trademark.
Yes, it is registered to GT.
If you put the exact, or near exact Hokie Bird on water tower in CA, it would make for a real strong case of likelihood of confusion.
The primary ways to lose trademark protection are described in a post below. So, no. The only way GT loses their trademark is if they stop using it.
No, what I meant was if I hand draw someone's logo, do they lose their right to protect their trademark, as I've clearly changed it a little. You said earlier it doesn't have to be exact, just close enough so that people might mistake it.
The answer to that should be no, they don't lose the right to protect it if it's slightly different.
I'm just pointing out that Georgia Tech does have some legal rights here. They could be even more heavy-handed and insist that the high school not use that logo at all.
They might win and they might lose if it went to court. I wouldn't bet on it either way.
Like I said, though, if I were Georgia Tech, I'd let them amend their agreement and put the logo on the water tower.
Maybe it's semantics, but I think you're asking if GT would be able to successfully assert TM infringement on your hand-drawn logo. It would totally depend on context and the use of your drawing, but it probably not rise to infringement for several reasons, most notably a consumer would not confuse your hand drawn logo for a GT's.
Of course GT has right, that does not mean they have a strong legal case.
Disagree. If it were irrelevant then they would have nothing to worry about and GT would have to prove the school infringed which as you pointed out would be difficult for them to do given the differences in the two logos. However, precisely because they did have licensing agreement, it means they agreed to its infringement on GT trademarks whether it causes confusion or not.
It is interesting that the licensing came so late. I wonder if GT threatened them and they chose to license instead of fight it.
There is no legal "agreement to infringement." There is a factor in the likelihood to confusion test where if the Defendant, in this case Damascus, purposely copied the mark of GT, then that's more likely to be found infringing. That requires intent, a showing of actual facts extrinsic to the marks themselves, at the time of making the mark, not at a time of licensing. However, during licensing agreements, Damascus could have made damaging remarks about their bee and intent to GT, and GT have them on record.
So, when I say the license is irrelevant, I mean licensing it is not a factor of infringement by any legal test. But, it could reveal other facts that equate with factors that are relevant.
hmm.... this is different from what I said. yes, there is no legal "agreement to infringement", however by signing that licensing agreement Damascus agreed that their logo is legally similar to the trademarked Buzz logo and therefore if in breach of said licensing agreement it would be an infringement.
Again, then a licensing contract would be useless. The license is the only factor in this legal test because it clearly states they cannot use it for anything other than sports uniforms, athletic buildings and merchandise. Which is clearly what GT's letter states to them: "However, use of the trademarked mascot outside of property owned by the school itself is not permitted under the limited-use license agreement that Damascus High School and other K - 12 licensed schools have with Georgia Tech."
If the License agreement were irrelevant in any legal test then GT wouldn't have a leg to stand on.
A license is not an agreement "that their logo is legally similar to the trademarked Buzz logo and therefore if in breach of said licensing agreement it would be an infringement." Legally, a TM license is an agreement that one party may use a TM without suit from another party. There IS NO agreement that it would be an infringement.
I think that you're assuming that entities only get into license agreements because they in fact do infringe, but that's simply not true. Entities get into licenses all the time to avoid litigation, NOT because they believe that they actually do in fact infringe. It's a safeguard to prevent any and all legal actions that would cause detriment. A simple suit could cost Damascus hundreds of thousands of dollars to defend, and thus, getting into a license was necessary from a business tactic, since they probably cannot afford a defense and it would be unwise use of taxpayer dollars. The only time you actually infringe is when a judgment is laid upon you from a court (or admissions in settlement).
GT has many legs to stand on, TM infringement is based on the legal doctrines of TM infringement, not on Contract law. It is possible that Damascus is in breach of the license, but GT's rights would arise from contract law, not TM law. I don't know if Damascus agreed to not use the Bee in any setting other than allowed by license. If Damascus did agree to not use the Bee in any other setting, it would be a breach of contract, not infringement.
Again, as I said earlier, there could be admissions in the contract or during the negotiations that could be a factor in TM infringement.
Also, I don't know what legal test you're referring to. The only one I know of is the likelihood of confusion. Perhaps, I can use this test with the USPTO in the future.
ah... You're talking TM infringement, I am talking about an infringement on the contract. Relative to this situation that is the only thing that matters which is why I keep saying the license agreement cannot be "irrelevant".
my writing of legal "test" was in error though. I meant legal "case", as in this Damascus situation. my bad.
I am having a difficult time seeing the outrage here. The logos are practically identical, with the Damascus one being different in only minor ways. They would get smoked in civil court, as all GT would need to do is show their image first and then show Damascus' asking the jury if they are too similar. It would be a slam dunk win for them.
You're seeing this nation wide right now with high schools. There are too many cheap knockoffs or outright copies of collegiate and professional trademarks and you're seeing this kind of cease and desist happening coast to coast while the trademark owners protect their IP. These high schools need to develop their own looks and not rip off others.
This is not the legal test. Likelihood of confusion is. Again, this test is if a consumer walks up to the tower, would a consumer believe this was GT's tower based on the mark? The jury wouldn't be allowed to simply compare the marks. If they did, it would be a mistrial.
Based on some people who work in the field, I know at least of one lawyer that thinks this case would not be a slam dunk, as you propose. ;)
It's a trademark case where GT would be accusing Damascus of infringement. If you can't compare in that case, the trademark law in general needs to be abolished. Hell, in that case I can start selling hand drawn fairly accurate Hokiebirds and crude VT logos and not pay a dime in licensing to Tech.
The purpose of trademark law is to protect consumers. When a consumer purchases a product, they are being assured they're getting a product from a certain company. When a consumer buys a Rolex watch, they are assured it is a Rolex by the Rolex TM. That's the sole purpose of the law.
Businesses have used trademarks to also market and build their reputation. When you buy a Rolex watch, you're not just buying a product assured of Rolex quality, but you're buying the brand and the reputation that goes along with it. Trademark law isn't concerned about these things as a priority.
Thus, the test is based on consumers. If a consumer comes up to shirt and sees the Damascus Bee, are they going to be confused to think they are buying a GT shirt? If so, then the mark infringes. Because a consumer wouldn't come up a Damascus t-shirt right next to a GT t-shirt, the strict comparison of the two isn't allowed to determine infringement. That's not to say comparison isn't important, but it's not the most outcome determinative test. Actual confusion is. If a party can show that consumers were actually confused and thought they would be buying a GT product, then it's a slam dunk case. (Think all those LV purses sold on the streets in every major city).
Of course, GT (and everyone with TM), is going to use the law to its full force to protect all their interests, not just those the law intends to protect. GT doesn't want its bee (or similar bees) going up anywhere and everywhere. However, their right to assert their TM, if it were to go to trial, is limited to the likelihood of confusion by consumers.
That's the thing, though. If you had previous exposure to the GT brand (and that is exactly why the trademark is in place, to protect their brand) the Damascus mark is confusing. If I saw that on a water tower, I would initially wonder why a Maryland community was supporting GT. And if I saw that logo as a sponsor of something, I would initially think it was supported by GT. And that is why GT has to protect it, because they don't want to see Damascus use it in a way that would never intend and lead people with prior knowledge of the GT logo think that it was GT.
And VT is just as stringent about this as anyone else. In fact I believe we've asked/forced both the Broadway High School Fighting Gobblers in Virginia and the Cuero High Gobblers in Texas to change their looks to be less Hokie and more their own thing. At least Broadway was using a direct ripoff of both the old and new logos.
If you can convince a jury that these are true from a consumer's point of view, and that a consumer would believe or has believed they were derivative of GT, then you'll win.
Honestly, if I saw the Damascus mark isolated on the water tower, I don't think I would make the connection to GT. If I did, I would think it was a generic dollar store level knock off.
Unlike my high school alma mater, which blatantly ripped off the Chicago Bears' "C" and the Arizona State mascot logo.
Culpeper?
yup.
The cedarville logo is quite distinct from GT's:
I'd imagine the other universities' logos are similarly unique.
Reminds me of this. I get the point, but I still think schools like this are assholes for doing it.
Then, no, you don't get the point. The point is fail to defend your trademark once and you risk losing it. It's why we have Band-Aid brand and bandages, or how Bayer actually LOST their trademark on Aspirin in the U.S.
That's not actually true. You don't lose a trademark by not asserting it (or a copyright or patent). Each have their own way of terminating or loss, but there is definitely no requirement to assert it.
There are 2 primary ways to lose your trademark: (1) Abandonment (no longer use it), and (2) becomes generic. It is true that a mark could become generic if you don't assert it, but that's EXTREMELY unlikely, and even more unlikely for colored mark like the bee. There are only a small population of marks that have been lost for becoming generic: Thermos, Kleenex, Dumpster, Realtor. It should be noted, these are all word marks too that entered into popular vernacular.
If you want a source, you can read my bio ;).
I know this is a bit of a tangent, but has "Kleenex" truly become genericized? I don't know that I've ever heard someone say something along the lines of "may I have a Kleenex", in my experience most people still call them "tissues". Seems like the only time I hear "Kleenex" used in the general sense is when people list off genericized trademarks.
I will say that I didn't even know that "Dumpster" and "Realtor" were trademarks. Guess that goes to show how generic those terms have become.
Yea, it's somewhat of weird phenomena. Because your TM is so popular, it becomes part of the vernacular, so you lose your rights. I'm not sure why Kleenex didn't fight it (maybe they didn't care enough), but with enough money and good legal strength, you can convince the Trademark Office that it has not become generic. Just ask Xerox and Google.
Wait, Xerox isn't considered generic yet? I hear the phrase "Xerox copy" way too often considering my office doesn't have a single Xerox-branded machine.
Exactly. Money + Legal Power.
In Latin America, the word "Kleenex" has been spanglished into the common vernacular. It is far more used than the grammatically correct word "panuelo." (Yes, I can't get the tilde to appear)
In Soviet Russia, Kleenex wipes you!
Actually, that should be true everywhere...
Don't know where you're from, or your age, but in my experience, Kleenex is used way more often than tissue, though folks seem to know that you mean one when you say the other.
My wife is a third year law student and I own a small business. I do get it. I still think it's an asshole thing to do, like you assuming I don't get the point. Cheers!
Piss of an entire town of strangers because they want to paint a logo that really no one would confuse for being related to GT's?
At Georgia Tech, you can do that!
Polyteching > Single Teching
When GT comes to Lane often times some of their students commit a crime and steal the T. They shouldn't do that, it's bad. It's criminal. But it happens.
So... Just pointing out that an industrious bunch of young kids could get up to a lot. Including routinely painting your school logo on the water tower and all over town. It's bad. Shouldn't do that. But damned if that T doesn't keep getting stolen.
Just saying....
"If you ain't cheating, you ain't trying hard enough" - old Naval Aviator's saying.
In my experience, GT students will also steal your VT magnets from your car when you're grabbing a bite at Taco Bell after lightning strikes Lee Corso's car. Screw 'em and their little tech school too.
Just redo the hornet and get out of the licensing deal.
Great idea! Just change the stinger details and rename yourself as the Horny Hornets.
"The more I think about it, ol' Billy was right, let's kill all the lawyers, kill 'em tonight." Don Henley
Must be off season
Never thought I'd see Damascus on TKP, even more so relating to GT. Go Hokies and Go (Swarmin) Hornets!
Assuming you're alum? When'd you graduate?
2008. One of 13 or so who went to tech from our class
We probably know each other then.. I was also '08. Haha small world.
If you're last name is Harris, I think I know who you are. Not to give out too much personal info, but I was the tall lanky guy with a weird last name that started with K. Hope life's going well for you man.
I think I got it. Haha if I'm thinking of the right person, you now live in Tennessee and work at a brewery? (according to Facebook)
I neither know nor care about the details, I just hate Paul Johnson.
After reading this thread I now consider myself competent to practice copyright, trademark, patent, and IP law. Thank you Chazz.
Anytime.
