Are "U" Famous Enough? Trademark Dilution at the University of Miami?

If you're anything like me, sports logos are burned into your brain. You see certain colors, a design, or even a single letter, and you immediately know the team. That’s how powerful sports branding can be. But have you ever wondered if those logos are actually famous outside the sports world?

I thought certain sports teams and logos were common knowledge until University of Miami v. Caneup LLP. The University of Miami (Miami) has a trademark registration for their orange and green “U” symbol and the word “Canes.” Caneup, a Florida based company started in 2014 and applied to register the mark in 2021.  Miami sued for trademark infringement because they felt that CaneUp was trying to confuse people into thinking their products were associated with the school. (McCann, 2024). Miami also said, Caneup’s CEO admitted in “prior communications” that he had spent “years” working on the Caneup design with the university in mind, a point the school says shows an intentional attempt to infringe. (McCann, 2024).

Due to the similarity with the phrase “Canes” and Caneup, the court stated, Caneup appearing on products “is likely to cause consumer confusion” given that the word “Canes” and “Caneup” are “predominantly made up of the word ‘Cane’ which to sports fans at least is heavily and instantly associated with the university. (McCann,2024). Caneup was held liable for trademark infringement. What’s really interesting, though, is that Miami also argued their logo was being diluted.  The court found Caneup was NOT liable for the dilution claim. Turns out, just because team’s logo is famous for sports fans, doesn’t mean it’s "famous enough" in the eyes of the law.

Let’s dive in and figure out what exactly trademark dilution is, how to know if you are famous enough, and why Miami lost the trademark dilution part of the case.

WHAT IS TRADEMARK DILUTION ANYWAY?

A trademark is a word, symbol, or design that identifies and distinguishes the source of goods or services from others. It helps protect brand names and logos used in commerce from being copied or misused. This way consumers are not confused between products or services. Typically, courts will look at whether there is a “likelihood of confusion” between your trademark and the other mark. That is, whether the consumer would likely be confused as to who is the source of the goods or services.

Trademark dilution is not just confusion; it’s about protecting the most famous brands’ distinctiveness. The brands do not want a lesser brand tarnishing their trademark.

Think of it like this, trademark dilution is when a famous mark, like Barbie, loses its distinctiveness because other brands start to use a similar name, even if no one is confused about who’s who. If another brand starts to use the name Barbie for computers, toys and computers are so unrelated that consumers are unlikely to believe Barbie computers come from the toy brand. The Barbie mark would then become less special, less unique, and less recognizable over time. Trademark dilution protects marks that are so well-known, highly reputable, or famous that jurisdictions have decided they deserve protection whether their unauthorized use is likely to cause consumer confusion.

There are two types of trademark dilution:

1. Blurring: This happens when the distinctiveness of a famous mark is impaired by association with another similar mark or trade name. Imagine if a small company started using a swoosh-like logo. Even if you know it's not Nike, it still takes away from the swoosh’s uniqueness. See 15 U.S.C. § 1125(c)(2)(B).

2. Tarnishment: This occurs when the reputation of a famous mark is harmed through association with another similar mark or trade name. For example, if a company were to use a famous logo in a negative or inappropriate context, it could tarnish the original brand’s image. See 15 U.S.C. § 1125(c)(2)(C).

   
   

WHY NO DILUTION FOR MIAMI?

Take the University of Texas’ longhorn logo, for example. It’s just as iconic or possibly more iconic than Miami’s logo in college football. In a 2008 case, a federal judge in Texas ruled the logo had niche fame but not wide recognition by the American consuming public. Texas football is practically a religion in some parts of the county and commonly plays on national television. Still, it still was not enough recognition.

Judge Marty Fulgueira Elfenbein, who presided over the case here, followed the same route as the University of Texas’ case. Judge Elfenbein made it clear that for a mark to claim dilution protection, it needs to be famous among the general public, not just within a niche community like sports. She felt Miami’s "U" was not similar to brands like Kodak and Buick where they are recognizable even to people who could care less about photography or cars. (McCann, 2024). And while Miami’s logo is beloved by college football fans, it doesn’t have that same level of universal fame.

HOW TO TRULY KNOW WHAT “FAME” IS?

So why didn’t Miami’s logo qualify as “famous enough” for dilution? The answer lies in trademark law itself. According to the Federal Trademark Dilution Act (FTDA) dilution only applies to marks that are truly famous across the general population.

To establish a claim of dilution, the mark must have become famous before use of the allegedly diluting mark or trade name began. The law, as explained in Section 1125(c) of the FTDA, sets a high bar for what counts as a famous mark. To be eligible for dilution protection, a mark must be widely recognized by the general public. Factors for determining whether a mark possesses the necessary degree of recognition include:

1.     The duration, extent, and geographic reach of advertising and publicity of the mark

2.     The amount, volume, and geographic extent of sales of goods or services offered under the mark and

3.     Extent of actual recognition of the mark. See 15 U.S.C. § 1125(c)(2)(A).

All the factors are based on judicial discretion. There is no exact number a brand needs to reach that will automatically give them the ultimate fame title. Courts must gather and weigh all relevant evidence. The findings will vary case to case. There are key findings that can be shown in each factor that could help their case.

For the first factor, it would be helpful for brands to show the times where they had nationwide advertising in magazines, billboards, television, etc. The longer and more extensive the advertising efforts, the more likely the mark will be deemed famous. If a brand can establish that it publicized its mark through press releases, conferences, and sponsorships that could help as well.

The second factor is most likely the best to visually see how famous they are. Numbers never lie and to see the sales and volume of downloads of an app or visitors to a website could be eye opening. As one district court has explained, “courts generally have limited famous marks to those that receive multimillion-dollar advertising budgets, generate hundreds of millions of dollars in sales annually, and are almost universally recognized by the general public.” (Jacobs-Meadway, 2019). The numbers pertaining to a brand are not everything when it comes to fame, but it can bolster their cause.

The court wants to know how widely known the brand is to the general public. This is done in two ways; (1) third party publicity and (2) consumer surveys. Third party publicity is unsolicited and extensive media attention such as associations of a mark with celebrities, industry specific awards, television shows referencing the brand.

The court looks at three potential issues with fame consumer surveys. (1) Survey universe (who constitutes the general consuming public?) (2) Level of recognition (what percentage of recognition is necessary for a mark to be widely recognized?) (3) Timing of survey (during what time period must fame be measured?). (Jacobs-Meadway, 2019). Consumer surveys are not required but based on the numbers can help or even hurt the evidence for fame.

Miami’s logo didn’t qualify as "famous enough" for dilution purposes because the Federal Trademark Dilution Act (FTDA), reserves this protection for marks that are widely recognized by the general public, not just a niche audience like sports fans. To establish a dilution claim, the mark must have achieved fame before the use of the allegedly infringing mark, and courts must consider several factors. There’s no magic number that guarantees a mark is famous, instead courts must weigh all the evidence, making it challenging to predict whether a brand is truly famous enough for dilution protection.

WHAT UNIVERSITIES CAN LEARN FROM THIS?

At the end of the day, the University of Miami v. Caneup case shows us that fame in sports doesn’t always translate to real fame. As much as we love our teams, and as instantly recognizable as their logos may seem on game day, they might not be famous enough to win a trademark dilution case. It’s a reminder that the sports world is tiny compared to the world where goliath companies have branded themselves. When it comes to trademark dilution it’s not just about being known in your community; it’s about being famous everywhere.

Cited

Jacobs-Meadway, R. (2019, August 26). Proving Fame for Trademark Dilution Claims. Retrieved from Lexis Nexis : https://www.lexisnexis.com/community/insights/legal/practical-guidance-journal/b/pa/posts/proving-fame-for-trademark-dilution-claims?srsltid=AfmBOopIcrkuvv_DtUsWMW4aBePLBX4L_4zJUtX6fNV6xPaYB5UzfrFT

McCann, M. (2024, October 20). HOW FAMOUS IS MIAMI’S CANE AND U? JUDGE SAYS NOT NATIONALLY SO. Retrieved from Sportico : https://www.sportico.com/law/analysis/2024/miami-sacks-caneup-1234801775/

Chris D'Avanzo can be followed on (X) @chrisdavanzo