Website logo use and trademarks

[jpl4k3]

What is the name of your state (only U.S. law)?

State of Florida.


I am currently in the process of setting up a new website. Index of /, my website is a free social messaging board for the community of Gainesville, Fl which happens to also be home to the University of Florida and the Florida Gators. I had a friend who works with graphics to throw something together for me for the site.

The image incorporated a picture of the famous UF clock tower, the Florida Gator logo, and a picture of the football stadium. I was unsure of the legality of using the Florida Gator logo, so I emailed the University of Florida's staff to try to get permission on this.

They had emailed me back saying this;

Hi James, your request was passed along to me. Both the Gator Head and the word “swamp” are registered trademarks, so you would need a license agreement with the university to use either or both. Please contact Debbie ***, [email*******************[/email], for information regarding permission/licensing.

*** *******


I am not sure how they are able to trademark the word "swamp" Is that possible for them to trademark an everyday word? The gator head I can understand, and have no problem with removing that from my logo. Here is a picture of the logo;

http://i25.photobucket.com/albums/c83/il1uzions/swampIntro.jpg


Any legal advice would be greatly appreciated.

 

[quincy]

Yes, it is possible to have a trademark on an everyday word.

As a most general rule, a trademark is owned by the person/business that first uses the mark in a commercial context. Even common everyday words or names can be trademarked and can become connected in people's minds with a product or service. Think of these: Sears, Ben and Jerry, Arrow, Bank of America, Playboy. These common names and words have acquired a "secondary meaning" over time due to the popularity of the products and services marketed by these companies.

The Florida Gators have trademarks on the names, logos, symbols, nicknames, letters, words and colors (and any combination of these) associated with the University of Florida. "The Swamp" refers to Ben Hill Griffin Stadium and has been used as an identifier for the stadium and is recognized by others as an identifier of the stadium. The University has licensed the use of the words "The Swamp" for University of Florida related merchandise.

Your unlicensed use of "swamp" for your website could be seen as infringing on the University of Florida trademark, since your site targets the Gainesville community and since your site appears to be capitalizing on the University of Florida trademarks to entice people, especially Gators fans, to your website. Your orange color scheme connects your site even more to the Gators, although an orange and white color scheme alone would not necessarily be infringing on the blue and orange trademarked colors. It only adds to the confusion a consumer may already have when running across your "SwampForum" site.

You can use the common word "swamp" in another context - for example, in a website with a forum that is devoted to North American swamps - but when your use can confuse consumers into thinking your site is run by, supported by, endorsed by, or connected in any way with the University of Florida, you run into infringement problems. And I can tell you that universities are very protective of their trademark rights, as merchandise sold with their marks generate a lot of income for the universities. In other words, they will not hesitate to send a cease and desist letter, a demand for $$ letter, or file an infringement action against you.

You would be wise to run your website ideas and your proposed graphics by an IP attorney in your area for a review, so that you can better avoid any potential lawsuit. It also does not hurt to take out liability insurance for your site, on the off chance you are sued anyway.

You are wise to be concerned with the legalities involved in operating your website now, before you find yourself in court. Good luck.


(by the way, I was unable to access your logo - has it been pulled?)

 

[jpl4k3]

Yes, it is possible to have a trademark on an everyday word.

As a most general rule, a trademark is owned by the person/business that first uses the mark in a commercial context. Even common everyday words or names can be trademarked and can become connected in people's minds with a product or service. Think of these: Sears, Ben and Jerry, Arrow, Bank of America, Playboy. These common names and words have acquired a "secondary meaning" over time due to the popularity of the products and services marketed by these companies.

The Florida Gators have trademarks on the names, logos, symbols, nicknames, letters, words and colors (and any combination of these) associated with the University of Florida. "The Swamp" refers to Ben Hill Griffin Stadium and has been used as an identifier for the stadium and is recognized by others as an identifier of the stadium. The University has licensed the use of the words "The Swamp" for University of Florida related merchandise.

Your unlicensed use of "swamp" for your website could be seen as infringing on the University of Florida trademark, since your site targets the Gainesville community and since your site appears to be capitalizing on the University of Florida trademarks to entice people, especially Gators fans, to your website. Your orange color scheme connects your site even more to the Gators, although an orange and white color scheme alone would not necessarily be infringing on the blue and orange trademarked colors. It only adds to the confusion a consumer may already have when running across your "SwampForum" site.

You can use the common word "swamp" in another context - for example, in a website with a forum that is devoted to North American swamps - but when your use can confuse consumers into thinking your site is run by, supported by, endorsed by, or connected in any way with the University of Florida, you run into infringement problems. And I can tell you that universities are very protective of their trademark rights, as merchandise sold with their marks generate a lot of income for the universities. In other words, they will not hesitate to send a cease and desist letter, a demand for $$ letter, or file an infringement action against you.

You would be wise to run your website ideas and your proposed graphics by an IP attorney in your area for a review, so that you can better avoid any potential lawsuit. It also does not hurt to take out liability insurance for your site, on the off chance you are sued anyway.

You are wise to be concerned with the legalities involved in operating your website now, before you find yourself in court. Good luck.


(by the way, I was unable to access your logo - has it been pulled?)

I never posted the logo on my website, just uploaded it to photobucket.

Thank you for your detailed response btw. If I were to write on the website somewhere "SwampForums.com is not affiliated with the University of Florida." wouldn't that alone protect me since it is written there stating that I am not partnered with them?

 

[cyjeff]

I never posted the logo on my website, just uploaded it to photobucket.

Thank you for your detailed response btw. If I were to write on the website somewhere "SwampForums.com is not affiliated with the University of Florida." wouldn't that alone protect me since it is written there stating that I am not partnered with them?

You are missing the point.

You cannot make a statement that your unlawful use of something is really lawful.

If you are showing a picture of the stadium and using the word "swamp" or anything else that betrays it as the UF property, their legal team will come down upon you like the wrath of God.

Now, they will be Florida educated lawyers and so the briefs will all be written in crayon... but they will still be valid.

 

[jpl4k3]

You are missing the point.

You cannot make a statement that your unlawful use of something is really lawful.

If you are showing a picture of the stadium and using the word "swamp" or anything else that betrays it as the UF property, their legal team will come down upon you like the wrath of God.

Now, they will be Florida educated lawyers and so the briefs will all be written in crayon... but they will still be valid.

I get what your saying, but at the same time "theSwamp" and "SwampForums" are two completely different names. Not only that "theSwamp" is a nick name for a stadium for the University of Florida, SwampForums.com is a site for the GAINESVILLE community which just so happens to be where UF is located. I still haven't gotten a response back to the email i sent the UF marketing dept. We will see, but I will make sure to play it safe; which is why I am here asking for advice to begin with.

 

[cyjeff]

I get what your saying, but at the same time "theSwamp" and "SwampForums" are two completely different names. Not only that "theSwamp" is a nick name for a stadium for the University of Florida, SwampForums.com is a site for the GAINESVILLE community which just so happens to be where UF is located. I still haven't gotten a response back to the email i sent the UF marketing dept. We will see, but I will make sure to play it safe; which is why I am here asking for advice to begin with.

You are saying that you didn't know that the University of Florida football stadium was referred to as the swamp?

Just so happens?

Are you willing to try that out in a court of law? Against real lawyers that have repeatedly and successfully sued people hundreds of times over the years that have infringed upon ANY aspect of the trademark?

This is a very poor idea.

 

[jpl4k3]

You are saying that you didn't know that the University of Florida football stadium was referred to as the swamp?

Just so happens?

Are you willing to try that out in a court of law? Against real lawyers that have repeatedly and successfully sued people hundreds of times over the years that have infringed upon ANY aspect of the trademark?

This is a very poor idea.

Where in the above post did I say that?

 

[quincy]

Disclaimers on a website can mitigate damages in the event of a lawsuit, but they do not prevent lawsuits.

An example:
I create a maize and blue colored website and call it "WolverineForums." My website address (Wolverine.com) could be seen as capitalizing off the University of Michigan's trademark and attracting visitors to the site, many perhaps visiting solely on the belief that the site is affiliated with U of M and the best football team in the nation (or, hopefully, at least a little better this season than last ).

There has already been consumer confusion with my web address, before the visitors ever make it to my maize and blue site. It could be claimed that I have infringed on the University of Michigan's trademarked nickname. A disclaimer on the site has not prevented the initial consumer confusion. And the problems multiply if my site is not concentrating on the furry little wild wolverine critters but instead is concentrating on the big wild football-playing Wolverine critters.

You have already been advised by the University of Florida's licensing department that your use of the Gator and The Swamp on your site could be considered infringement on their property rights. Your best bet now is to have the rest of your website plans reviewed by an IP attorney in your area, who can direct you on what you can safely include on your site, and what you must avoid on your site to prevent a lawsuit.

You may also want to hang around this forum a while longer, too, and wait for our resident trademark and patent attorney, divgradcurl, to post with additional information (he will also clean up any inadvertant errors I may have made ).

Good luck.


(ha. I just saw your "crayon" comment, cyjeff. Pretty funny.)

 

[jpl4k3]

Disclaimers on a website can mitigate damages in the event of a lawsuit, but they do not prevent lawsuits.

An example:
I create a maize and blue colored website and call it "WolverineForums." My website address (Wolverine.com) could be seen as capitalizing off the University of Michigan's trademark and attracting visitors to the site, many perhaps visiting solely on the belief that the site is affiliated with U of M and the best football team in the nation (or, hopefully, at least a little better this season than last ).

There has already been consumer confusion with my web address, before the visitors ever make it to my maize and blue site. It could be claimed that I have infringed on the University of Michigan's trademarked nickname. A disclaimer on the site has not prevented the initial consumer confusion. And the problems multiply if my site is not concentrating on the furry little wild wolverine critters but instead is concentrating on the big wild football-playing Wolverine critters.

You have already been advised by the University of Florida's licensing department that your use of the Gator and The Swamp on your site could be considered infringement on their property rights. Your best bet now is to have the rest of your website plans reviewed by an IP attorney in your area, who can direct you on what you can include on your site, and what you must avoid on your site to prevent a lawsuit.

You may also want to hang around this forum a while longer, too, and wait for our resident trademark and patent attorney, divgradcurl, to post with additional information (he will also clean up any inadvertant errors I may have made ).

Good luck.

Thanks for your help. If I get time I may also try to call the marketing/licensing dept for UF tomorrow to speak with them to see what they say. Hopefully they will say don't use the gator head, which is understandable; and let me go from there.

 

[quincy]

The University of Florida's licensing department is probably a good place to start.

With trademarks, the most important factor looked at is consumer confusion. A court would be looking at the similarity between the marks, if consumers can be easily confused or are confused by the marks, if the goods or services are similar or the same, if the same general group of consumers is targeted, and then the court will look at the intent behind the use of the "second" mark. When finishing the design of your site, you can keep these factors in mind.

Again, good luck with your website.

 

[divgradcurl]

Quincy pretty much covered what you need to know. Either get permission from the University to use the name (in writing -- an email is generally insufficient), or find another name -- or potentially face legal action from the University.

 

[jpl4k3]

Sent several emails, left voicemails, and cant get a response on this. This sucks lol.

 

[quincy]

Divgradcurl said that emails are generally not sufficient. It looks like you are going to have to pull out some business stationary, a business envelope, locate a pen and a stamp, and do this the old-fashioned way.

 

[jpl4k3]

if I were to use a domain like GainesvilleForums.com would I now need permission from the city of Gainesville to use that name in my domain?

 

[quincy]

No. A city name on its own cannot be trademarked - only potentially the name used in combination with other words or names or colors or images.

There are several Gainesville-related websites already (with Gainesville dot coms and orgs and cityofs and times and registers and visitGainesville domain names). You, too, can use the name Gainesville in your domain name and for your website. However, without something else to catch a viewer's eye and make your name stand out, you could find that your website is getting lost in the shuffle. Oh, and there is a "Gainesville Forum" already.

You can do a basic trademark search on your own by going to United States Patent and Trademark Office. This can help you eliminate some names quickly. But, it is important to note that not all trademarks are registered - registered marks are just entitled to a greater degree of protection from infringement. In addition, just because a certain mark IS registered does not necessarily preclude you from using the same or a similar mark, if your use of it is for an entirely different purpose which would not lead to consumer confusion.

Having an IP attorney involved with your website setup and plans can not only be a big help with a trademark search, an attorney can help ensure your site is as safe as it can possibly be from a lawsuit.