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In Yale (University) vs. Yale (Academy), the University Wins

Again from the New York Times, a good look at trademark infringement lawsuits involving Ivy League schools.

The article features a lawsuit Yale University recently filed against Yale Academy, a SAT test prep school. Yale Academy said it chose its name by combining the names of its owners, Mr. Yang and Ms. Lee. Oh, and the academy also used Yale University’s blue-and-white color scheme because, as Mr. Yang explained, blue was his favorite color. 

The academy will soon be known as Y2 Academy.

The article quotes a Harvard University spokesman who said the university “actively protects its name and trademarks from unauthorized use around the world, especially in those areas most important to, and most identifiable with, Harvard, such as education research.”

The reporter thought that meant Harvard Maintenance was in the clear, since its janitorial services are sufficiently different from the educational services that Harvard University provides. But not Korea’s Harvard Academy or India’s Harvard International School of Management, both of which received cease-and-desist letters from the university and agreed to change their names.

Interestingly, the article points out that no one trademark owner can have a monopoly over geographically descriptive trademarks, which limits what Princeton University (located in Princeton, New Jersey) or Columbia University (which shares its name with many cities) can do to enforce their rights.

The takeaways? If you develop a unique brand — one that points back to you alone — you can broadly assert your trademark rights against third parties that mimic your brand and your offerings. However, pick a weaker brand — like one that is descriptive — and your efforts to enforce your trademark will be much more limited.

In other words, be Yale or Harvard, not Princeton or Columbia.

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