To begin, first you have to look at what the University of Kansas has a trademarked. According to the United States Patent and Trademark Office, KU has a protected interest (a trademark) in the word "Kansas" when used in the following categories of goods and services:
IC 016. US 002 005 022 023 029 037 038 050. G & S: printed awards,( printed bank checks, ) printed cards, clipboards, decals, ( paper flags, ) pencils, pens, photograph albums, playing cards, postcards, prints, stickers and transfers. FIRST USE: 19380107. FIRST USE IN COMMERCE: 19380107
IC 025. US 022 039. G & S: apparel, namely, T-shirts, sweatshirts, sport shirts, replica athletic uniforms, shorts, and sweaters, belts, gloves, handwarmers in the nature of mittens and gloves, hats, ( leather shoes, ) slippers, ties and visors. FIRST USE: 19380107. FIRST USE IN COMMERCE: 19380107
IC 041. US 100 101 107. G & S: educational services, namely, providing courses of instruction at the college and graduate level; educational research; entertainment exhibitions in the nature of sporting events; and entertainment services in the nature of theater and concert products. FIRST USE: 19380107. FIRST USE IN COMMERCE: 19380107
http://tess2.uspto.gov/bin/showfield?f=doc&state=hajo6m.3.912Additionally, the word "Kansas" when associated with the university (its athletic department, its various schools, activities, etc.) gives it a secondary meaning, i.e. "Kansas" means the "University of Kansas". This gives KU a vested interest in protecting its trademark. As stated on their Trademark Licensing Policy webpage:
The University of Kansas benefits from the public recognition of its names, symbols, logos, trademarks, servicemarks, designs, and seals, or any combination of these (“Marks”). Federal, state, and common laws govern the University’s rights to its Marks. In order to comply with and assure protection under trademark laws, the University of Kansas initiated a licensing program in 1978 and entered into a formal arrangement for a national program in 1982. Responsibility for the Trademark Licensing program now resides in Kansas Athletics. The program has four main objectives:
1. Protection of all Marks that relate to the University (or have come to be associated with the University), and to ensure that the marks are used in a manner that is consistent with the mission of the University and reflects favorably on the University.
2. Promote the University in a consistent and uniform manner to protect the University’s reputation, name, and image.
3. Produce revenue to pay for the expense of operating the program and for programs and scholarships at the University and in the University of Kansas Athletics Department.
4. Protect the consumer from deception or from faulty or inferior products and services bearing the University's Marks.
more at:
https://documents.ku.edu/policies/provost/TrademarkLicensing.htm So the question is: Is there a likelihood of confusion about the origin of a product in the mind of the average Joe Six-Pack purchasing a shirt (or other product) from Larry such that he/she is thinking that he/she is buying shirt (or other product) "associated, affiliated, connected, approved, authorized or sponsored" by the University of Kansas (the bona fide holder of the trademark)?
To answer this, you have to understand what trademark infringement means. Bitlaw.com has a pretty good analysis of trademark infringement.
Infringement criteria :
The elements for a successful trademark infringement claim have been well established under both federal and state case law. In a nutshell, a plaintiff in a trademark case has the burden of proving that the defendant's use of a mark has created a likelihood-of-confusion about the origin of the defendant's goods or services. To do this, the plaintiff should first show that it has developed a protectable trademark right in a trademark. The plaintiff then must show that the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake and/or deception with the consuming public. The confusion created can be that the defendant's products are the same as that of the plaintiff, or that the defendant is somehow associated, affiliated, connected, approved, authorized or sponsored by plaintiff.
Eight factors for likelihood of confusion:
To analyze whether a particular situation has developed the requisite "likelihood of confusion," courts have generally looked at the following eight factors:
1. the similarity in the overall impression created by the two marks (including the marks' look, phonetic similarities, and underlying meanings);
2. the similarities of the goods and services involved (including an examination of the marketing channels for the goods);
3. the strength of the plaintiff's mark;
4. any evidence of actual confusion by consumers;
5. the intent of the defendant in adopting its mark;
6. the physical proximity of the goods in the retail marketplace;
7. the degree of care likely to be exercised by the consumer; and
8. the likelihood of expansion of the product lines.
The first five of these factors are examined in every trademark infringement action. The last three factors are the most common additional factors that are considered by a court.
Of these eight factors, the first two are arguable the most important. The similarity of the marks is clearly an important part in establishing likelihood of confusion, but it is far from determinative. It is possible for the same, identical mark to be used in the same geographic area without any trademark infringement occurring, as long as the goods or services of the parties are sufficiently dissimilar. As an example, a quick review of the Minneapolis phone book lists numerous companies operating under the name SPEEDY. The services offered by these companies are as follows:
* Car washing services;
* Locksmith services;
* Grocery retail services;
* Printing services;
* Plumbing services;
* Sign creation services; and
* Video rental services.
In one way, these companies are a good example that the same mark can exist on multiple goods and services as long as the goods and services are sufficiently difference. However, this may be a poor example since the SPEEDY mark may be too descriptive to function as a trademark without proof of secondary meaning (see BitLaw's discussion of the strength of marks for further information).
http://www.bitlaw.com/trademark/infringe.htmlDoes the University of Kansas have a protectable interest in products that people will think are "associated, affiliated, connected, approved, authorized or sponsored" by the University? Yes. They have a reputation to uphold in both the word "Kansas" if a goods or service can be associated with the university and in ensuring quality of products that are associated with the scope of their trademark. That's why the university sells licenses to produce goods and services that could be associated, affiliated, connected, yada, yada, yada with the university.
In this instance, Larry is selling t-shirts with the words or slogans that are sold at a store called Joe College in Lawrence and the products he is selling look very similar to products that the University has a protectable interest in. He's in the same market, selling shirts that can be easily confused with those protected by KU's trademark. In short, there is a high degree of a likelihood of confusion by the average consumer that they are buying a good associated with the university.
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