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  1. #1
    Join Date
    Jul 2011
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    Default Use of a University's Name in Company Name

    So I know this a bit of a grey area but I need some insight on this.

    My company uses a university's name in it's title, example, Vanderbilt Bubble. The school wants us to license the name in exchange for equity. The site does have to do with students, students organizations, and campus events. However, the company is in no way related to the university nor its message.

    I see all these small companies around that use university names, example: Emory Laundromat, Vanderbilt Exchange. These businesses are related to the school merely in their proximity to campus. I sincerely doubt they have a license with school to use the name as the word "Emory" is merely a name like any other, referring to nothing necessarily.

    So my question is, do we need this license? Is the addition of "Bubble" not enough to warrant an entirely new trademark?

    thanks!

  2. #2
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    Default Re: Use of a University's Name in Company Name

    I expect that the difference is that the other uses of the mark are merely references to location or proximity, while your use of the mark (in their mind) relates to a registered mark they have for social and club activities (or something similar).

    You will need to investigate their mark(s) and perhaps run the specifics of your business plan past an IP lawyer for an analysis of whether your use implicates their mark(s) and, if so, whether they could successfully enforce their mark(s).

  3. #3
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    Jan 2006
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    Default Re: Use of a University's Name in Company Name

    Quote Quoting ballerjones
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    Is the addition of "Bubble" not enough to warrant an entirely new trademark?

    thanks!
    no

    the problem comes when there can be confusion cause by the use of the trademark. With the laundromat or the exchange, unless it can be confused so that it is believe those companies are associated with the Emory or Vanderbilt schools, there is likely no infringement. With your situation, given the services provided by the business, it looks like there could easily be confusion as to that being officially associated with the school. That is what would prevent you from using the name.

  4. #4
    Join Date
    Jul 2011
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    Default Re: Use of a University's Name in Company Name

    So how is something like Campus Gossip: Vanderbilt, or Campus Gossip Vanderbilt compare? Are those trademarkable? If so, then I fail to see why a simple order change isn't too.

    When I search the trademark site the word "Emory" doesn't come up, what gives? I'd like to take a closer look. What exactly constitutes infringement?

  5. #5
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    Jan 2006
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    Default Re: Use of a University's Name in Company Name

    just because a name or term is not registered as a trademark does not mean the owner doesn't have trademark rights. Rights to the mark come from the use of it, not registering it. Registering it affords additional actions and makes a claim to the use easier to prove. The registration itself is not where the rights emanate from.

    I put in a simple search for Emory and got 38 hits:

    http://tess2.uspto.gov/bin/showfield...h=Submit+Query

  6. #6
    Join Date
    Jul 2011
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    4

    Default Re: Use of a University's Name in Company Name

    So if the campus is part of a greater program, i.e. The Hangout: Emory, this is passable?

    Back to the original name, could we not argue or stipulate that in the name Emory Hangout, "Emory" refers to the area in and around Emory (just like the laundromat), and not to the university? The hangout indeed would service the area, including businesses surrounding and sometimes distant to campus that cater to students.

    So only a trademark attorney could verify this?

  7. #7
    Join Date
    Jan 2006
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    Default Re: Use of a University's Name in Company Name

    not only is trademark law very fact specific but how willing the owner is to spend money to defend their rights is extremely important. If they believe you are infringing, even if you aren't, and they are willing to toss 10's or even 100's of thousands of dollars at a lawyer to defend their rights, you could end up spending as much to defend your claim it is not infringing. This is one of those times where the guy with the money often wins because the little guy loses, even if he wins.

    Yes, speaking with an IP attorney that review the facts of your situation would be a very good idea before taking any action.

  8. #8
    Join Date
    Jul 2011
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    4

    Default Re: Use of a University's Name in Company Name

    We will consult an IP attorney, then.


    Last question: Does switching the order, ie. The Hangout: Emory, have any effect? Assuming only "The Hangout" is trademarked on our side.

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