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Information on this site is for educational purposes only and is not intended as legal advice. If you have a legal problem, consult your institutional counsel or an attorney licensed to practice law in your state. Information and views presented in this blog are solely those of the individual contributors and not their employers.


What's The Matter In Kansas? Bill Would Ban Public College and University Employees From Using Official Titles In Opinion Pieces

A bill pending in the Kansas Legislature would prohibit public college and university employees from providing their official titles in newspaper opinion pieces. The Chronicle of Higher Education has published a commentary that I wrote critical of this proposed legislation (available here).


Trademark Rights Accretion in Higher Education: Penn State & Duke Edition

I have written here, in the Chronicle, and elsewhere about college and university efforts to trademark aspects of their identity.  The phenomenon I call “trademark rights accretion” speaks to attempts by institutions to obtain exclusivity over market references they deem as theirs.  This post concerns two actions recently initiated at the United States Patent and Trademark Office (USPTO), where two famous universities have turned to adversarial proceedings to (1) in the case of Penn State, strip a non-competitor of a federal trademark registration, and (2) in the case of Duke University, prevent a non-competitor from registering a trademark that the institution views as problematic.  While both of these activities comport with the legal rights afforded them as trademark owners, I think each is shortsighted as a matter of higher education policy, for the reasons explained below.

The Pennsylvania State University owns federal trademark registration number 4,561,709 for the mark PENN STATE WHITE OUT as used in relation to “promoting public awareness of the need for fan participation and involvement in collegiate athletic competitions, excluding hockey competitions, conducted within the Commonwealth of Pennsylvania.”  It claims to have used the mark since 2004.  Penn State has enjoyed a federal registration for the mark since 2014.  Penn State had to fend off an opposition challenge brought by the Phoenix Coyotes hockey team, which uses WHITE OUT with respect to hockey, in order to enable the mark to register (thus the limitations concerning collegiate athletic competitions, excluding hockey, and only those contests conducted within Pennsylvania).

Now Penn State has picked its own fight.  On February 9, 2015, Penn State petitioned the USPTO’s Trademark Trial and Appeal Board, seeking cancellation of a trademark registration owned by a Norwegian company, Norrøna Sport AS, for the mark WHITEOUT as used in relation to a variety of clothing items.  Penn State initiated this action because a trademark examiner cited Norrøna’s existing registration as reason to deny a second application filed by Penn State to register PENN STATE WHITE OUT, this one claiming use in relation to “shirts.”  Penn State claims that Norrøna is no longer using the WHITEOUT mark in the United States, if it ever was (non-use is grounds for cancelling a trademark registration).

Regardless of its legal basis, Penn State’s effort here is misguided as a matter of policy.  PENN STATE WHITE OUT is hardly an integral feature of the university’s existence or functioning (unlike, for example, its name, seal, or athletic team name).  The university likely had hoped to register simply the words WHITE OUT, but knew that such an application would be refused due to Norrøna’s registration, so the university added the words PENN STATE to the mark in order to hopefully gain registration.  When the effort did not work, it decided to seek cancellation of Norrøna’s registration.

I would argue that the university’s real interest seems to lie in capitalizing on the color white as used in relation to collegiate athletic contests.  To state the obvious, there are quite a few collegiate teams across the country that use white as one of their official colors, and whose fans might wish to coordinate the wearing of such color to athletic contests, which they might also wish to descriptively term a “white out.”  Will Penn State seek to stop any attempts by other institutions to “white out” a stadium by asking their fans to wear white, the school color?  To ask the question is to understand how Penn State’s cancellation effort, while a technical concern about trademark protection, actually implicates a larger issue involving freedom of expression that ought to concern more than just those in Happy Valley.  If Penn State is willing to take this degree of action against a commercial entity with which it does not compete, what will it do to competitors within higher education if it obtains this registration?  Boise State’s activity with its trademark for a blue-colored playing field serves as a cautionary example.

Also on February 9, 2015, Duke University opposed an application filed by Benson Williams to register the mark DRANK UNIVERSITY as used in relation to athletic apparel (Opposition No. 91220555).  An opposition is a legal proceeding in which a trademark holder has the chance to prove that it would be harmed by the registration of a new trademark that the USPTO has cleared for registration.  Only after a USPTO attorney examines an application, and deems it fit for registration, do third-party mark holders have a chance to oppose an application, as Duke has done here. 

The university claims that registration of DRANK UNIVERSITY will create a likelihood of confusion and dilute the distinctive and famous nature of the DUKE trademarks owned by Duke University.  Here is the parade of horribles that Duke envisions should DRANK UNIVERSITY be permitted to register:

“Applicant’s proposed mark could presumptively be depicted on and in connection with jerseys in [Duke’s] school colors, in medieval or gothic font (both of which are strongly associated with Duke), in connection with collegiate teams and athletes, and with a devil visually similar to or parts thereof reminiscent of [Duke’s] mascot, and such goods could presumptively further be marketed in associated with images depicting, and themes associated with, colleges, collegiate programs, and, more specifically, [Duke] and [Duke’s] athletic team along with other indicia evocative of [Duke].”  Opp. No. 91220555, Notice of Opposition, ¶ 14, p. 5

It seems the real harm Duke is concerned with is simply a third party calling to mind the university in a manner the university finds objectionable—i.e., “drank” could relate to drinking, and any thoughts connecting drinking with Duke are verboten.  Here it is important to note the fact that the owner of DRANK UNIVERSITY might seek to use collegiate indicia merely to evoke a thought in a consumer’s mind about Duke University does not amount to consumer confusion.  Consumers are capable of seeing a mark, thinking about a particular university because of the mark, and yet not being confused into thinking that that university sponsors, condones, approves, licenses, or is otherwise affiliated with the mark.

In its opposition, Duke goes on to describe in additional detail, none of which is convincing, the harm it foresees should the DRANK UNIVERSITY mark register and come into contact with Blue Devil fans everywhere.  To wit:

“The application contains no distinguishing field of use or market limitations, or restrictions on channels of trade. The mark thus presumptively could be used to market sports jerseys, athletic wear or bags designed to facilitate tailgating to the hundreds of thousands of Duke fans around the country who support [Duke] and its athletic teams. The mark sought to be registered, used in connection with goods closely related to those sold under [Duke’s] DUKE Marks, presumptively would be marketed with images thematically evocative of [Duke] and would presumptively be targeted at, and marketed through channels of commerce directed to, [Duke’s] athletes and fans as well as [Duke’s] alumni, employees, students, potential students, and parents of students past, present, or future. The goods further could be sold on or adjacent to Duke University’s campuses and at or adjacent to Duke-branded facilities in North Carolina and in other states. In short, it must be presumed that the market and the channels of trade through which Applicant’s applied for goods will travel are identical to those that are currently used by [Duke] and that have been used by [Duke] since long prior to any priority date to which Applicant might be entitled.” Opp. No. 91220555, Notice of Opposition, ¶ 15, pp. 5-6.

This opposition stands as yet another example of higher education’s troubling turn to thought policing in the name of trademark “protection.”  Thematic evocation of Duke University—if that is even what the DRANK UNIVERSITY mark does, which I doubt (and on this point, note that Drake University shares more letters in common with DRANK than does Duke, yet Drake has taken no action)—is not itself actionable, despite college and university efforts to claim exclusive right to arbiter any market references to them.

Moreover, a quick visit to the website for DRANK UNIVERSITY shows how silly any allegation of confusion with Duke University actually is.  Nothing on the site calls to mind Duke University whatsoever.  Of course, Duke’s attorneys would be quick to point out that, should the mark register, hypothetically the mark’s owner could change course and decide to restyle all of its products so that they “thematically evoke” connection with Duke University in a way that confuses consumers.  This essentially is an argument that action now prevents mischief later.  But the key rejoinder is that even if such a circumstance came to fruition, Duke University would not be without recourse: it could sue for trademark infringement.  Owners of trademark registrations take this step from time to time, and the fact that they did not exercise their right to oppose an applicant’s efforts to register the mark at the USPTO cannot be used against them.

In short, use and registration are related but distinct concepts in trademark law.  Better for universities, rooted in the public sphere and dedicated to the public interest, to permit others to engage in non-confusing uses of colors and terms that may call them to mind.  They also should experience real market harm before deciding to take market action.


New Report On Re-Conceptualizing Faculty Appointment Structures And Support

For those interested in faculty issues, I recommend a recent report authored by Adrianna Kezar and Daniel Maxey, co-directors of the Delphi Project on the Changing Faculty and Student Success. Kezar, a professor at the University of Southern California, is a leading researcher into the status of and issues affecting non-tenure-track faculty (NTTF), and Maxey is a Ph.D. candidate at USC. The report (available here) is entitled Adapting by Design: Creating Faculty Roles and Defining Faculty Work to Ensure an Intentional Future for Colleges and Universities. Institutions should consider carefully the call to action issued in the report. Reading the document made me think of recent coverage about the University of Denver’s restructuring of faculty policies for NTTF. The changes provide for career paths for long-term NTTF with the possibility of promotion and multi-year contracts. The revised standards also provide stronger language for the protection of academic freedom for faculty, including NTTF. Coverage from InsideHigherEd about the initiatives at the University of Denver is available here.


Senate Task Force Report On Higher Education Regulations 

A U.S. Senate appointed task force on federal regulations affecting higher education recently released its findings (the report is available here through NACUA). The task force, which included multiple institutional presidents, concluded in its report that the U.S. Department of Education's (DOE) oversight of higher education has "expanded and evolved in multiple ways that undermine the ability of college and universities to serve students and accomplish their missions." The task force argues that current regulations are too voluminous and complex, overly costly to implement, at times too unrelated to basic educational and financial concerns, and create barriers to innovation. The DOE isn't likely to be big of a fan of the report, as the task force also contends that the department has an "increasing appetite for regulation," fails to act on matters in a timely fashion, and "appears indifferent to the regulatory burdens it imposes."

One regulatory area of criticism discussed in the report involves recent Title IX guidance from the DOE, which has been a prominent topic on campuses and in the national media. In relation to DOE efforts to strengthen the response of higher education institutions to instances of sexual harassment, including sexual assault, the task force argues that the department issued guidance that is overly complex. It states that a 2011 "Dear Colleague" letter resulted in confusion and led to a number of questions, resulting in the need for even more guidance, which the DOE took three years to produce. And, according to the task force, this added guidance, presented in a question and answer format, only resulted in more questions and uncertainty. With Title IX and in other regulatory areas, the task force calls for the DOE to rely more on formal rule making (versus less formal guidance mechanisms) and the development of better procedures in the rule making process and in the implementation of standards.

The task force targeted particular areas of regulatory concern among institutions, specifically regulations dealing with eligibility for financial aid, return of Title IV funds, fiscal responsibility standards, accreditation, authorization of distance education programs, uniform definitions of crimes for purposes of the Clery Act, timely warnings about campus threats, definitions of "noncampus property," and consumer information. The task force also criticized the DOE for the proliferation of regulations the task force described as unrelated to education, safety, or financial stewardship.

As we head toward eventual reauthorization of the Higher Education Act (HEA), this report reflects a trend heard in various venues calling for the streamlining of federal regulatory standards and processes for higher education. At the same time, other constituencies have called for increased financial accountability from and quality control in higher education, often noting the substantial federal investment at stake. Interestingly, the Lumina Foundation, which is cited in the report for its assistance, has also been viewed in some corners as pushing lawmakers, including at the federal level, to take a greater role in redesigning various aspects of higher education. Thus, even amidst reports like this one for regulatory relief, there are parallel calls that colleges and universities are falling down on the job. Threading the needle of regulatory reform while at the same time answering calls for increased accountability and innovation in higher education will likely prove challenging during reauthorization. At an intrinsic level, a reduction in regulatory burdens would seem to require a degree of trust in higher education that generally appears in short supply today in many legislative and policy circles.

As we approach (sooner or later) the reauthorization of the HEA, a tension between calls for regulatory relief and the seemingly increasing distrust of higher education will seemingly be present. In such areas as competency based learning, online education, access and equity, concern over production of graduates in STEM fields, questions over quality, and frustration with the cost of obtaining a higher education degree, the wishes of lawmakers in these areas may overwhelm the idea of ratcheting down regulatory requirements. There currently exists something of a cottage industry of higher education critics calling for major reforms of colleges and universities while also contending that institutions are unwilling or unable to make required changes. Accordingly, efforts at regulatory reform in certain areas may be matched by calls for increased federal oversight and regulation in other ones. Given current distrust of colleges and universities among many policymakers and interest groups, I'm curious how the issue of regulatory relief will actually play out during the next reauthorization of the HEA.

UPDATE: Per the tension discussed in this post, check out this PBS story (available here).


Neal Hutchens Wins Kaplin Award

Congratulations to our very own Neal Hutchens, who today was awarded the William A. Kaplin Award at the 36th Annual National Conference on Law & Higher Education, sponsored by Stetson University College of Law's Center for Excellence in Higher Education Law & Policy.  The prestigious Kaplin Award is awarded yearly to a scholar whose published work in higher education embraces the intersection between law and policy.  Neal is an excellent choice for this important honor, whose past winners (and namesake) include some of the biggest names in the field of higher education law. Read more about the award here.

Below is a photograph of Neal giving his acceptance speech at the conference's luncheon today in Orlando, Florida.  Seated on the dais are, from left to right, Professor Peter Lake (conference organizer and professor of law at Stetson), William Thro (last year's award winner, and current general counsel at the University of Kentucky), and Bill Kaplin (truly a founder of the field).

Way to go, Neal!