Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 THE UNIVERSITY BOOK STORE, BROWN'S BOOK SHOP AND THE WISCONSIN MERCHANTS
THE BOARD OF REGENTS OF THE UNIVERSITY OF WISCONSIN SYSTEM
Opposition No. 84,223; 84,224; 84,288; 84,289; 84,290; 84,789
June 22, 1994
Before Simms, Seeherman and Honein
Administrative Trademark Judges
Opinion by Hohein
Administrative Trademark Judge
Applications have been filed by The Board of Regents of the University of Wisconsin System (hereinafter "applicant" or "the University") to register the following marks for various items of apparel: (i) a badger design, reproduced below,
which is popularly known as "Bucky Badger" (and henceforth will be referred to by either such name or as simply "Bucky") for "clothing, namely, jackets, long sleeve and short sleeve T-shirts, tank tops, fleece tops, collared shirts, sweatshirts and sweatpants, sweaters, slacks, shorts, nightshirts, ties, hats, caps, boxer shorts, socks, infants' shoes, infants' playsuits, infants' sweatshirts and sweatpants, infants' t-shirts, bibs, and infants' dresses"; [FN1] (ii) the same badger design on a block letter "W" (hereinafter "Bucky on W"), illustrated below,
for "clothing, namely, athletic jerseys, jackets, warm-up suits, sweatshirts, t-shirts, collared shirts, sweaters, pants, ties, hats, visors, caps, ponchos, aprons, and wristbands"; [FN2] and (iii) "WISCONSIN BADGERS" for "clothing, namely, long sleeve and short sleeve T-shirts, tank tops, fleece tops, sweatshirts, caps, hats, socks, night shirts, bibs, infants' one-piece suits, infants' T-shirts, and infants' sweatshirts". [FN3] In addition, applicant seeks to register the "Bucky Badger," [FN4] "Bucky on W" [FN5] and "WISCONSIN BADGERS" [FN6] marks for, in each instance, "educational services, namely, conducting lectures, courses, workshops, seminars and conferences at the university undergraduate, graduate and post-graduate levels, and conducting extension courses and community service lectures and workshops; [and] entertainment services, namely, sports exhibitions, theatrical productions, public lectures, art exhibitions, musical concerts, dance and ballet performances, and motion picture exhibitions".
Registration has been opposed by The University Book Store (hereinafter "UBS"), a Massachusetts common law trust with its principal place of business at 711 State Street, Madison, Wisconsin; Brown's Book Shop (hereinafter "Brown's), a Wisconsin corporation with its principal place of business at 673 State Street, Madison, Wisconsin; [FN7] and The Wisconsin Merchants Federation (hereinafter "WMF"), an association incorporated in the State of Wisconsin which is composed of approximately 350 wholesale or retail merchandising businesses located throughout the State of Wisconsin. [FN8] As allegations common to all pleaded grounds for opposition, opposers assert, inter alia, that with respect to the "Bucky Badger" mark, such mark was created in 1940 when Brown's commissioned the Anson W. Thompson Company to design and produce a mascot for use by Brown's; that neither applicant nor anyone associated with the University made active use of such mark at any time from 1940 until the late 1940s; and that starting in the late 1940s and continuing since then, both the Board of Regents [FN9] and numerous non-affiliated entities have made extensive use of such mark. Opposers, as to the "Bucky on W" mark, allege the same assertions with respect to the "Bucky Badger" portion of the mark and also allege, as to the letter "W," that such letter was created centuries ago and that, since at least the 1930s, extensive use thereof has been made by both the Board of Regents and non-affiliated entities. Similarly, with respect to the "WISCONSIN BADGERS" mark, opposers claim that the terms "WISCONSIN" and "BADGERS" were created centuries ago and that, with respect to the former, extensive use thereof has been made by non-affiliated entities since the 1700s, while such use by the Board of Regents has occurred only since the 1850s. As to the term "BADGERS," opposers maintain that it has been used to refer to residents of the State of Wisconsin since at least the 1820s; that, while extensive use thereof has been made by non-affiliated entities since that time, such use by the Board of Regents did not begin until the 1880s; and that, with respect to the words "WISCONSIN BADGERS," non-affiliated entities have used such words at least since the time that the Board of Regents started using those words.
*2 Opposers further allege that uses of the marks in issue by non-affiliated entities have included imprinting the marks on clothing and other goods; manufacturing and selling such goods; using the marks in advertising and promoting the sale of such goods; and using the marks to promote sports exhibitions and to create customer goodwill. Opposers also contend that during the early 1980s, the Board of Regents indicated in response to several inquiries by non-affiliated entities that anyone was free to use the "Bucky Badger" figure and the words "WISCONSIN BADGERS" since, as confirmed in internal correspondence, it did not claim ownership rights therein; that until January 1988, the Board of Regents never claimed any ownership rights in the marks now sought to be registered or objected to uses thereof by non-affiliated entities; that both before and after January 1988, UBS and Brown's have used such marks in connection with both substantial sales of clothing and other merchandise imprinted therewith and the rendering of educational services; that both before and after January 1988, many members of WMF have likewise used the marks; and that consequently, UBS, Brown's and other members of WMF who sell imprinted merchandise bearing the marks and render educational services thereunder have a right equal to the Board of Regents to use the marks in connection with the goods and services sold by them in commerce.
Opposers additionally allege that on January 8, 1988, the Board of Regents entered into a licensing agreement with International Collegiate Enterprises, Inc. (hereinafter "ICE") which stated that the Board of Regents owned the involved marks and appointed ICE as the Board of Regents' exclusive agent to license use of the marks by others and to collect royalties which were to be divided between ICE and the Board of Regents; that, with approval of the Board of Regents, ICE has granted licenses since January 1988 to manufacturers of merchandise imprinted with the marks and has required the payment of a royalty of 6.5 percent of the selling price of each item sold by these manufacturers; that many of the manufacturers have added the royalty to the price of the marked merchandise which they sell to retailers including UBS, Brown's and those members of WMF who sell marked merchandise; that UBS and WMF have maintained the position that the Board of Regents does not own the marks and that, accordingly, the license agreement is invalid; that the Board of Regents has made several efforts to compel UBS to comply with the licensing program and to pay the royalty; that WMF has asserted its position in various ways, including attempting to obtain a declaratory judgment as to the validity of the license agreement; that the Board of Regents has indicated to UBS that it intends to actively control use of the marks by non-affiliated entities and to prohibit those uses which it considers improper; and that, on information and belief, federal registration of the marks would promote such activities by the Board of Regents and would improperly interfere with the rights of non-affiliated entities, including UBS, Brown's and other members of WMF who use the marks in connection with sales of imprinted merchandise and educational services.
*3 As pleaded grounds for opposition, opposers allege in each instance that "applicant has abandoned" the marks sought to be registered inasmuch as, prior to January 1988, applicant never claimed--and in fact disclaimed-- ownership thereof and allowed UBS, Brown's, additional members of WMF who sell imprinted merchandise and/or render educational services, and others to use such marks freely and without objection. Opposers insist that "as a result of these acts and failures to act, consumers and members of the public never have regarded and do not now regard" the marks "as an indication that the Board of Regents makes, sponsors or endorses" use of the marks in connection with merchandise imprinted therewith or educational services rendered thereunder. In the two oppositions which involve the mark "WISCONSIN BADGERS," opposers additionally allege that such mark, when applied to applicant's goods and services, is "merely geographically descriptive". [FN10] Lastly, with respect to the three oppositions in which applicant seeks to register the subject marks for items of apparel, opposers also allege that the imprinting of such marks on clothing and other items of merchandise "serves an ornamental purpose and is essential to the use and the purpose of those articles" in that the marks give the articles "most of their value" and affect "the cost, nature and quality of such items". Opposers consequently maintain that, as to each of the subject marks so used, "the designation sought to be registered does not function as a mark". [FN11]
Applicant, in its answers to the notices of opposition, has admitted among other things that the Board of Regents "did not make active use of Bucky Badger until the late 1940's"; that the Board of Regents "has made extensive use of the letter 'W' at least since the 1930's"; that the Board of Regents has made extensive use of the mark "WISCONSIN BADGERS," both as a service mark since at least 1920 and as a trademark since at least 1953; that at one time the Board of Regents stated in a letter that certain logos, including the "Bucky Badger" and "Bucky on W" marks which are presently sought to be registered, were "in the public domain" and could be used "without license or royalty arrangement"; that the Board of Regents at one time also stated in a letter that the word "WISCONSIN" "can be used by anyone"; that the Board of Regents entered into a license agreement with ICE, as its agent, on January 8, 1988; that applicant has granted licenses to manufacturers to imprint the marks at issue on their merchandise; that such manufacturers are required to pay a royalty of 6.5 percent of the selling price of each item of marked merchandise; that it has communicated that it intends actively to control use of the marks by non-affiliated entities; and that it intends to take all necessary steps to prohibit uses of the marks by non-affiliated entities which it considers inappropriate. Applicant, however, has denied the remaining salient allegations of each of the notices of opposition.
Motions and Standards for Summary Judgment
*4 These cases, which were consolidated by an order of the Board issued on December 23, 1991, now come up on applicant's motion, timely filed on September 14, 1992, for summary judgment dismissing the oppositions and opposers' cross motion, received on November 18, 1992, for summary judgment sustaining the oppositions. Each side has timely responded to the other's motion. [FN12] Applicant, in its response, has incorporated a reply brief in support of its motion, while opposers have separately submitted a reply brief with respect to their cross motion. In addition, applicant has also furnished a surreply brief. [FN13]
As has often been stated, the purpose of summary judgment is one of judicial economy, namely, to save the time and expense of a useless trial where no genuine issue of material fact remains and more evidence than is already available in connection with the motion for summary judgment could not be reasonably expected to change the result. See, e.g., Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 739 F.2d 624, 222 USPQ 741, 743 (Fed.Cir.1984) and Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 941 (Fed.Cir.1984). The burden in a motion for summary judgment is on the moving party to establish prima facie that there is no genuine issue of material fact and that it is entitled to a judgment as a matter of law. Fed.R.Civ.P. 56(c).
Moreover, on a motion for summary judgment, the function of the Board is not to try issues of fact but to determine, instead, if there are any genuine issues of material fact to be tried. A material fact is one that may affect the decision in the case. A genuine dispute with respect thereto exists if sufficient evidence is presented such that a reasonable fact finder could decide the question in favor of the nonmoving party. See Opryland USA Inc. v. Great American Music Show Inc., 970 F.2d 847, 23 U.S.P.Q.2d 1471, 1472 (Fed.Cir.1992). Consequently, all doubts as to whether or not particular factual issues are genuinely in dispute must be resolved against the moving party and, similarly, all inferences to be drawn from the undisputed facts must be viewed in the light most favorable to the nonmoving party. See Flatley v. Trump, 11 U.S.P.Q.2d 1284, 1287 (TTAB 1989) and cases cited therein. See also Olde Tyme Foods Inc. v. Roundy's Inc., 961 F.2d 200, 22 U.S.P.Q.2d 1542, 1544 (Fed.Cir.1992).
We further note, however, that as a general rule, the resolution of Board proceedings by means of summary judgment is to be encouraged. Sweats Fashions, Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 U.S.P.Q.2d 1793, 1795 (Fed.Cir.1987). This is particularly true when both sides seek resolution of their dispute by means of summary judgment. Blue Cross & Blue Shield Association v. Harvard Community Health Plan, Inc., 17 U.S.P.Q.2d 1075, 1076 (TTAB 1990) and Phoenix Closures Inc. v. Yen Shaing Corp. Ltd., 9 U.S.P.Q.2d 1891, 1892 (TTAB 1988). While it is also true that the mere fact that cross-motions for summary judgment have been presented does not necessarily mean that there are no genuine issues of material fact or authorize the resolution of such issues, where there is no dispute as to the material facts, summary judgment--if otherwise appropriate as a matter of law--is warranted and thus should be granted. [FN14] See, e.g., 6-Pt.2 J. Moore & J. Wicker, Moore's Federal Practice § 56.13 (2d ed. 1985) at 56-341 and Pagan-Lewis Motors, Inc. v. Superior Pontiac, Inc., 216 USPQ 897, 900 (TTAB 1982) [differences in accounts of the facts by the parties do not prevent summary judgment unless the differences are material to the outcome of the proceeding].
*5 The record in these proceedings, considering the issues presented, is still by any measure inordinately large. Applicant, in support of its motion and in opposition to opposers' cross motion, has furnished (approximately) 87 declarations and 35 affidavits, the majority of which contain exhibits, from such individuals as: its counsel herein, including various attorneys from the Wisconsin Department of Justice; certain employees of the law firm representing applicant; various alumni of the University as well as officers, directors, managers and others presently or formerly employed thereby; certain legislative and transportation department employees of the State of Wisconsin; a newspaper editor; a newspaper sports columnist; a television sports producer and director; officials of firms which have designed or printed catalogs for applicant featuring imprinted merchandise; officials of manufacturers which are licensees of applicant; licensing directors, athletic directors and other administrators at various major universities; the vice president for external affairs of Grove City College; the president and founder of Collegiate Concepts, Inc. (hereinafter "CCI"), which participates with ICE in a joint venture, known as both "CCI/ICE" and The Collegiate Licensing Company, which currently acts as applicant's licensing agent for the subject marks; counsel for CCI/ICE; the president of Angelus Pacific Company, which was formerly known as the Anson W. Thompson Company; and the chairman of Guideline Research Corporation. [FN15] Applicant has also submitted 13 discovery depositions, most with exhibits, which it took of the following persons: the owner of a market research firm; the presidents of UBS and Brown's; and various employees of certain members of WMF which, like UBS and Brown's, sell merchandise (including apparel) imprinted with the marks which applicant seeks to register. In addition, applicant has filed certain admissions and responses made by opposers to its discovery requests and has offered, among other things, copies of various publications, including newspaper and magazine articles and the following book by a former professor at the University: G. Schultz, The Bucky Badger Story (1981).
Opposers, in opposition to applicant's motion and in support of their cross motion, have likewise submitted a voluminous amount of materials which encompass 47 affidavits, [FN16] each with at least one or more exhibits; certain responses by applicant to various discovery requests by opposers; and various papers relating to the settlement on appeal of the case, upon which opposers heavily rely, of University of Pittsburgh v. Champion Products, Inc., 566 F.Supp. 711, 219 USPQ 834 (W.D.Pa.1983) (hereinafter "Pitt III"). [FN17] In particular, opposers have furnished affidavits from such individuals as: proprietors or employees of past and present firms, including UBS and Brown's, which have sold or sell postcards, clothing and other merchandise imprinted with the marks applicant seeks to register; officials of the Badger Conference and Niagara High School, which respectively use versions of the "Bucky Badger" figure, as well as the words "BADGER" and "BADGERS," in connection with high school athletic activities in the State of Wisconsin; [FN18] owners, officers and managers of a variety of businesses located in the State of Wisconsin, including many in the area around Madison, Wisconsin, which have used and/or currently utilize various versions of the "Bucky Badger" figure and/or the word "BADGER" in connection with their products and/or services; [FN19] a history professor at Marquette University; a former professor at applicant who authored the book entitled The Bucky Badger Story; a graduate student at applicant trained in historical research techniques; the president of Legal Marketing Research, Inc.; the presidents of UBS and Brown's; the vice president and general counsel of WMF; attorneys with, and legal assistants employed by, a law firm representing opposers; members of social organizations and professional associations, such as groups of cross-county runners, Vietnam veterans and firefighters, which feature versions of the "Bucky Badger" figure in their logos; the research director at Trademark Research Corporation, who conducted a search of the term "BADGER"; and the author of a 1989 publication called Wisconsin Almanac, which includes historical information about the State of Wisconsin. Opposers, with an affidavit from one of their attorneys, have also submitted nine discovery depositions which they took of various officials and employees of applicant and of its licensing agent's counsel.
Appropriateness of Summary Judgment
*6 After thorough review of the massive record in these proceedings, and consideration of the arguments and authorities presented in the nearly 250 pages of briefs, we are of the opinion that there are no genuine issues of material fact [FN20] and that applicant, rather than opposers, is entitled to summary judgment in its favor on all pleaded grounds for opposition.
Preliminarily, however, it should be pointed out at this juncture that there is no genuine issue as to opposers' standing to bring these proceedings. Opposers have established that UBS, Brown's and other members of WMF operate retail stores which, among other things, sell items of merchandise, including articles of clothing, imprinted with the subject marks. These sales activities, and the demonstrated actions of applicant since January 1988 in asserting its claimed rights in the marks in connection with its licensing program, are adequate to show a real interest on the part of UBS, Brown's and other members of WMF in opposing the grant of federal registrations, and the exclusive rights gained thereby, to applicant. Such is true for purposes of opposing both the applications which involve apparel as well as those which pertain to applicant's services. In particular, it simply is not necessary, with respect to the oppositions directed against the latter, for opposers to continue to assert the ludicrous position that their retail sales services constitute educational services because imprinted merchandise, including notebooks, book covers, pens and the like, may be characterized as school supplies. Instead, in view of their status as retailers of imprinted apparel, and thus subject to the 6.5 percent licensing fee applicant assesses on the sales by its licensed manufacturers to retailers, it has been shown that UBS, Brown's and other members of WMF plainly face higher prices from their vendors and suppliers which, when passed along to retail consumers, would result in diminished sales volume and/or decreased profits for such retailers. Furthermore, opposers have demonstrated that WMF meets the requirements for trade association standing set forth in Jewelers Vigilance Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 U.S.P.Q.2d 2021, 2025 (Fed.Cir.1987), since (i) the members of WMF, such as UBS and Brown's, have a personal interest in continuing their sales of merchandise bearing the subject marks and consequently would have standing in their own right; (ii) opposing the registrations sought by applicant is germane to WMF's purpose inasmuch as part of its mission is to promote the economic interests of its members; and (iii) there plainly is no need for each of the individual members of WMF to participate in these proceedings. Nevertheless, while there is no genuine issue as to opposers' standing, the merits of their claims are not otherwise well taken as explained below.
Turning first to the claim of abandonment, since it is the ground common to all six oppositions, opposers essentially contend that whatever ownership interests, if any, applicant may be said to have had in the "Bucky Badger," "Bucky on W" and "WISCONSIN BADGERS" marks, such rights have been lost by applicant's failure over many years prior to January 1988 to control the nature and quality of numerous third-party uses of the marks. [FN21] Applicant, while not disputing opposers' assertion that it did not actually create the marks in issue, argues that the purchasing public regards the marks as having originated with applicant inasmuch as it has adopted and continuously used them as indicia of source or origin for its goods and services. Although opposers, in particular, point to statements made prior to January 1988 by certain personnel of applicant that the marks were in the public domain and therefore were free to be used by anyone, applicant maintains that such statements, which involved only a relatively few isolated incidents, were in error and that circumstances, including its course of conduct over the years, have served to preserve the source-indicating function of each of the marks as that of signifying applicant.
(2) When any course of conduct of the owner, including acts of omission as well as commission, causes the mark to become the generic name for the goods or services on or in connection with which it is used or otherwise to lose its significance as a mark. Purchaser motivation shall not be a test for determining abandonment under this paragraph.
As explained by Judge Nies in Wallpaper Manufacturers, Ltd. v. Crown Wallcovering Corp., 680 F.2d 755, 214 USPQ 327, 333 (CCPA 1982), maintenance of exclusivity of rights in a mark is not required in order to avoid a finding of abandonment, since "[f]ew longstanding trademarks could survive so rigid a standard". Instead, so long as at least some members of the purchasing public identify applicant with each of the marks at issue, it cannot be said that applicant's course of conduct has caused any of such marks to lose its significance as a mark. 214 USPQ at 335. In this case, as in Crown, it is necessary to remember that (emphasis by the court):
[There is a] distinction between conduct of a trademark owner which results in a loss of right to enjoin a particular use because of an affirmative defense available to that user and conduct which results in the loss of all rights of protection as a mark against use by anyone. Only when all rights of protection are extinguished is there abandonment. E. Vandenburgh, Trademark Law and Procedure 267-68 (2d Ed. 1968). While this states only a conclusion without any guides as to when all rights are deemed to have been lost, it is helpful, nevertheless, to keep the distinction in mind.
Thus, under Crown, whether any of the opposers has a right to continue to use any of the marks applicant seeks to register is not determinative of the question of abandonment; rather, the focus must be on what rights, if any, applicant has in the marks. Id. Moreover, as emphasized in Crown, "a mark becomes abandoned only when the mark loses its significance as an indication of origin, not the sole identification of source". 214 USPQ at 336. Stated otherwise, in light of the pertinent change in statutory language made by the Trademark Law Revision Act of 1988, [FN22] abandonment occurs only when a mark loses its significance as a mark. The court recognized, however, with respect to the obligation to police a mark, that (footnotes omitted): [FN23]
Without question, distinctiveness can be lost by failing to take action against infringers. If there are numerous products in the marketplace bearing the alleged mark, purchasers may learn to ignore the "mark" as a source indication. When that occurs, the conduct of the former owner, by failing to police its mark, can be said to have caused the mark to lose its significance as a mark. However, an owner is not required to act immediately against every possibly infringing use to avoid a holding of abandonment. United States Jaycees v. Philadelphia Jaycees, 639 F.2d 134, 209 USPQ 457 (CA 3 1981). Such a requirement would unnecessarily clutter the courts. Some infringements are short-lived and will disappear without action by the trademark owner. .... Other infringements may be characterized as "creeping," starting as a business name, and only become serious when later use is as a trademark. ....
*8 214 USPQ at 336.
A case fully in accordance with Crown, and involving facts which, for the most part, are strikingly parallel to those in these proceedings, is Board of Governors of the University of North Carolina v. Helpingstine, 714 F.Supp. 167, 11 U.S.P.Q.2d 1506 (M.D.N.C.1989). Such authority, which opposers concede on the 51st page of their initial brief to be "one of the leading cases which discusses relative rights to logos as between universities and private users of the logos," held in relevant part that the failure by the University of North Carolina at Chapel Hill to prosecute substantial uncontrolled use of its marks by third parties from its founding in 1795 until the institution of a formal licensing program in 1982 did not result in abandonment because the marks did not lose all significance as indications of origin. Although opposers, as mentioned earlier, principally rely upon Pitt III, supra, in support of their theory of abandonment, we decline to follow such case. Aside from the fact that it was decided prior to the "Anti-Monopoly" amendments [FN24] to the Trademark Act, which eliminated purchaser motivation as a test for determining whether a mark has been abandoned, the subsequent court order, pursuant to the settlement agreement by the parties therein, to vacate as moot the judgment entered in Pitt III necessarily deprives the district court's opinion of precedential effect. [FN25] We thus agree with applicant that, contrary to opposers' contention that Pitt III remains good law, a vacated decision has no precedential value. See, e.g., Durning v. Citibank, N.A., 950 F.2d 1419, 1424 (9th Cir.1991) at n. 2 ["a vacated decision has no precedential authority whatsoever"] and In re Intelligent Medical Systems Inc., 5 U.S.P.Q.2d 1674, 1675 (TTAB 1987) at n. 2 [a vacated decision "is not precedent"]. Furthermore, even if Pitt III could be regarded as precedent, we find the reasoning expressed by the court, with its antiquated view of trademarks as harmful monopolies which must be rigorously confined within traditional bounds, [FN26] to be outmoded and not in accordance with more recent cases, such as Helpingstine and University of Georgia Athletic Ass'n v. Laite, 756 F.2d 1535, 225 USPQ 1122 (11th Cir.1985), [FN27] which recognize and accept the commercial reality of the now common practice of licensing of collegiate marks. [FN28] For these reasons, we regard Crown and Helpingstine, rather than Pitt III, as pertinent authority for the result which we reach with respect to the abandonment claim.
Accordingly, applying the relevant law to the material facts not genuinely in dispute, we find that applicant has not abandoned the marks which it seeks to register. By way of background, it is clear that the "Bucky Badger" figure was created in 1940 by Arthur C. Evans, an artist with the firm then known as the Anson W. Thompson Company, which was requested by Brown's to produce, for sale by Brown's, a sheet of decals which included mascots designed and intended to represent applicant. [FN29] Decals were then a very popular item with college students and the particular set commissioned by Brown's, which is reproduced below in reduced size, included the drawing of a belligerent "Bucky Badger"-- standing upright with chest thrust outward, wearing a ribbed letterman's W sweater and boxing gloves, [FN30] and featuring a determined upright stance, a no-nonsense stride and, perhaps most notably, a scowling facial expression-- which became the standard representation:
*9 Brown's has continuously sold decals depicting "Bucky" since 1940 and, later on, UBS likewise sold a version of such decals. Applicant's earliest use of the "Bucky Badger" figure it seeks to register occurred in 1948, when "Bucky" appeared on the front cover of the University's 1948 FOOTBALL FACTS AND CENTENNIAL SPORTS REVIEW. [FN31] Although the "Bucky Badger" figure also eventually came to signify applicant's educational services, the earliest documented use of "Bucky" in such capacity is an appearance on the front cover of a 1957-58 Freshman Course Guide, which was edited by the Curriculum Committee of the University's student association and was published through the courtesy of the University Co-op, as UBS (which changed its name in 1964) was then known. Insofar as use of the "Bucky Badger" mascot on clothing is concerned, both UBS and Brown's were selling apparel which was so imprinted by the early 1950s and have continued to do so along with many other members of WMF. Marketing of such clothing by applicant did not occur until, at the earliest, sometime in 1983.
With respect to use of the "Bucky on W" mark, the record reveals that Brown's sold clothing imprinted therewith during the 1950s and continued to do so through the 1960s. Other members of WMF, but not UBS, have also sold T-shirts, sweatshirts and/or caps imprinted with the "Bucky on W" mark. Actual use thereof by applicant, for both imprinted clothing and its athletic entertainment services, first occurred about 1983 as a variation of its licensed athletic department logo. [FN32] As to the "WISCONSIN BADGERS" mark, it is plain from the record that the words "BADGER" and "BADGERS" have long been associated with applicant. For example, the former word has been continuously used as the title of the University's yearbook since about 1889 and the latter term has been continuously used, first in reference to applicant's football team and later to refer as well to its other athletic teams, since 1893. While the phrase "WISCONSIN BADGERS" has long been used as a nickname for applicant's athletic teams and their fans, including members of the student body and faculty involved with the University's educational services, the earliest documented reference to applicant's athletic teams as the "WISCONSIN BADGERS" appears in a 1945 newspaper article. By the late 1980s, such usage was quite prevalent. The record further discloses that Brown's, since as early as 1955, and UBS, since the early 1960s, have continuously sold clothing bearing the mark "WISCONSIN BADGERS" and that third parties, including certain other members of WMF, have sold and/or continue to sell such imprinted apparel during the period from 1945 to the present. By contrast, it was not until the early 1980s that applicant itself first made actual use of the "WISCONSIN BADGERS" mark on imprinted clothing.
While opposers are consequently correct that in most instances, applicant has not been the first user of the subject marks for the goods and services for which registration is sought, it is critical to keep in mind that none of the opposers, or any third party, has ever used such marks as its own mark to identify and distinguish the particular goods and services involved in these proceedings. Opposers have admitted, in their responses to applicant's requests for admissions, that they have never made use of the marks applicant seeks to register as their marks. Instead, it is manifest from the record that opposers, and third parties alike, have merely sold and occasionally advertised items of apparel and other merchandise which have been imprinted with the marks.
*10 Such sales and advertising by opposers and various third parties for many years prior to applicant's institution of a formal licensing program in January 1988 simply reflect the fact that applicant, over the years, tolerated sales and advertising of goods, including clothing, bearing the marks it presently seeks to register. Applicant, like numerous other colleges and universities, permitted others to sell imprinted merchandise as expressions of community support and goodwill. Advertising of merchandise featuring various indicia associated with applicant, including the marks at issue herein, frequently coincided with events sponsored by applicant, such as athletic events and alumni gatherings.
Thus, rather than constituting uncontrolled use by opposers and third parties which resulted in the marks losing all source indicating significance, the reality of the situation which existed for many years may best be characterized as that of a royalty-free, nonexclusive, implied license to use marks which, particularly in and around the University's Madison campus, principally signified applicant in the mind of the consuming public and have continued to do so. Although there is evidence that, chiefly among tourists and summer session students from outside the State of Wisconsin, the marks sought to be registered by applicant identify the State of Wisconsin instead of or in addition to the University, it is undisputed that, to a significant portion of the relevant public, the subject marks identify applicant as the primary source of its educational and entertainment services and as the secondary source of the apparel imprinted with such marks. Except for one minor instance, [FN33] there is nothing in the record which even suggests that the nature and quality of the imprinted apparel sold by opposers and others was anything less than that of at least merchantable quality. While it is also the case that, by and large, applicant had no formal system of quality control over the subject marks before January 1988, it must be remembered that "the inference of abandonment is not drawn ... [where] satisfactory quality was maintained, and, hence, no deception of purchasers occurred". Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 59 (TTAB 1983), aff'd, 737 F.2d 1576, 222 USPQ 665 (Fed.Cir.1984). Therefore, even without, essentially, a formal system of quality control over the clothing and other imprinted merchandise sold by opposers and numerous third parties, the subject marks were not abandoned by applicant since the quality of the apparel imprinted with such marks remained at an acceptable level in virtually all instances.
Furthermore, while it is true that, as to the "Bucky Badger" figure and the terms "BADGER" and/or "BADGERS," "Bucky" and such words are in a sense ubiquitous, especially in and around the State of Wisconsin, due in large part to the facts that the badger (taxidea taxus) is the Wisconsin state animal and that Wisconsin is nicknamed the "Badger State," the third-party uses of "Bucky" and the terms "BADGER" and/or "BADGERS" shown on the record with respect to various diverse and distinctly different businesses located in Madison and other localities in the State of Wisconsin simply do not demonstrate that applicant has abandoned the marks it desires to register. Rather, and not surprisingly, that certain third parties, particularly those operating in and around Madison, are using the "Bucky Badger" image and/or the designation "BADGER" in connection with such disparate businesses as a laundromat, a bowling alley, a dental practice, and a restaurant/bar and social club clearly reflect an effort by those establishments to appeal to students at the University and thereby solicit their patronage. Use by other third parties of the "Bucky Badger" figure and/or the term "BADGER," in conjunction with such vastly different commercial enterprises as a fence company, a trucking firm, a bus company, a locksmith and security business, an automobile parts wholesaler, an industrial sand and limestone producer, a radiator repair shop, a snack food wholesaler, a food canning company, a medical supply firm, a self-storage facility, a balloon delivery service, a wholesale food distributor and a moving company, [FN34] is plainly meant to emphasize or underscore that those firms are based in Madison or otherwise are located in the State of Wisconsin.
*11 Opposers, in stressing that such uncontrolled uses by third parties amount to a forfeiture of any rights applicant may have had in the subject marks, are basically contending that applicant must maintain a right in gross in each mark. However, as noted previously, exclusivity of rights is not required as a matter of law in order for applicant to avoid a finding of abandonment. Even in instances where, arguably, applicant and others are each using the "Bucky Badger" figure and/or the words "BADGER" and "BADGERS," such as the use thereof by the Badger Conference and Niagara High School and the use of "Bucky" by groups of cross-country runners, Vietnam veterans and firefighters, the activities of these third parties are sufficiently different and distinct in nature from the university level educational and entertainment services rendered by applicant so as to preclude any inference of abandonment of the subject marks by applicant. [FN35] Consequently, while a number of third parties, as well as applicant, use the image of "Bucky Badger" and/or the words "BADGER" or "BADGERS" in connection with their activities and the promotion thereof, [FN36] the fact that such indicia have been diluted and are accordingly weak in terms of the scope of protection to which they would be entitled does not mean, in the case of both the uses thereof made by applicant, and those by its nonexclusive, implied licensees which inured to applicant's benefit, that the marks applicant seeks to register have lost their significance as marks. See 2 J. McCarthy, McCarthy on Trademarks & Unfair Competition, § 17.05 (3d ed. 1994).
Opposers also assert that until January 1988, applicant not only failed to object to any uses of the subject marks by others, but conceded that such marks were in the public domain and thus could be used by anyone. Specifically, opposers place heavy emphasis on their contention that in the early- and mid-1980s, applicant disclaimed any protectable trademark interest in the marks it now seeks to register by affirmatively stating, both in letters to third parties which had inquired as to whether permission to use the marks was necessary and in an internal memo, that the subject marks were in the public domain. For example, a November 5, 1982 letter signed by Michael A. Liethen, who was then the director of the University's Office of Administrative Legal Services, replied as follows to an inquiry received by applicant from Northern Cap Manufacturing Company:
This is in response to your October 12, 1982 letter inquiring about using University of Wisconsin-Madison logos on a line of headwear you plan to manufacture and sell.
With one exception, University of Wisconsin-Madison logos are in the public domain. They may therefore be used without a license or royalty arrangement with the University. The exception is the [athletic department] image of Bucky Badger superimposed over a large W. This particular logo is trademarked in the name of the Board of Regents of the University of Wisconsin System.
*12 As for the logos which are in the public domain, they may be used without any prior arrangement with the University. Of course, your products using these logos may not be marketed in any way which states or implies that the product or product-line is endorsed by the University. The University would consider legal action under those circumstances.
A 1985 letter, signed by Maureen Robinson, who at the time was employed by applicant's Division of Intercollegiate Athletics before leaving to conduct similar duties with the National "W" Club, an association of former lettermen and letterwomen at the University which, by a concessionaire contract with the athletic department, has sold imprinted merchandise in the University's field house through the operation of a retail store known as Bucky's Locker Room, provides a similar example:
This is in response to your letter of August 30, 1985 regarding the use of the Bucky Badger emblem.
The official (and registered) logo of the University of Wisconsin is the [athletic department] logo you see at the top of this stationery. Any other emblem or use of "WISCONSIN" or of the Bucky Badger image, itself, falls under the law of public domain and can be used by anyone on anything. To, then, answer your question specifically, the Bucky image can be used without any licensing or question of rights involved.
I hope this clears any questions you may have had regarding the use of the logo.
Likewise, in a November 26, 1984 memo on the subject of applicant's "Campus Advertising and Commercial Use Policy," which Art Hove, who was then an assistant to the Chancellor of the University, wrote and distributed to deans, directors and department heads, it is stated among other things that:
The University of Wisconsin-Madison seal and the most commonly used drawing of Bucky Badger have not been trademarked or copyrighted. Unrestricted use of these symbols has been commonplace for decades. For this reason, they are essentially in the public domain.
However, as part of the advertising and commercial use policy announced in the memo, it was indicated that:
Users of publicly available logos, symbols, or other UW-Madison material shall in no way imply University endorsement of any product or service.
Comment: University logos and symbols, with the exception of the official University of Wisconsin Athletic Department trade-marked logo, are in the public domain. They consequently are available to those who wish to use them in the manufacture of a particular product or a novelty or promotional item..... Any commercial use of the University's name by a non-University group must avoid any inference that the University sanctions or endorses the product or service in question. University personnel are requested to call to the attention of the Chancellor's Office any commercial activities contrary to this policy.
The memo also recites that the policy announced therein was prompted by the following circumstances:
*13 In recent years, the University has been experiencing an increasing trend in the commercial use of its name. Examples range from the sale of clothing and novelty items bearing the University's logo and/or athletic mascot to outside sponsorship of events held on campus utilizing University facilities.
This increased activity has raised several questions about what is possible and appropriate regarding commercial use of the University's name and facilities. Because this is a problem of broad concern, the Chancellor's Office has established an advertising/commercial use policy. This policy, which is effective immediately, is being implemented following wide consultation with University offices, departments, and organizations that are confronted with the need to seek advertising as a possible source of program support, or which have events or promotions that involve a possible connection with outside sources.
Opposers nevertheless acknowledge that, during this time frame, applicant modified the basic form letters it sent in response to third-party requests for permission to use the marks at issue. In particular, beginning in 1983 and continuing until the commencement of its formal licensing program in conjunction with CCI/ICE, letters written by Gail Snowden, who as an attorney with the University's Office of Administrative Legal Services was principally assigned the duty of responding to third-party inquiries regarding use of the subject marks and reviewing (along with Mr. Hove and Ms. Robinson) the nature and quality of any licenses granted, make no mention of the marks as being in the public domain. Instead, if the uses proposed were considered to be in "good taste" and otherwise did not imply University endorsement or expose the University to potential product liability problems, applicant granted the requests it received to use the marks on a royalty-free, nonexclusive basis. The following letter, which is dated October 4, 1983 and is addressed to the Imperial Toy Corporation, is typical and reflects, according to Ms. Snowden's understanding, applicant's policy and practice regarding third-party use of the subject marks as established by Mr. Hove and her boss, Mr. Liethen:
I have enclosed copies of the logo and mascot for the University of Wisconsin-Madison. You are granted a royalty-free permission to use these symbols on ... stickers and ... transfers. However, you may not state, advertise or imply in any manner that the University of Wisconsin-Madison endorses the products or encourages their purchase or use. Furthermore, you may not state, advertise or imply that these stickers or transfers are "official" or in any manner approved by the University.
You should know that the official trademark of the University of Wisconsin-Madison Athletic Department is the mascot Bucky Badger superimposed on a block letter "W." Royalties are assessed on its use and requests for permission to use that symbol should be addressed to Mr. Ralph Neal, Division of Intercollegiate Athletics, 1440 Monroe Street, Madison, WI 53706.
*14 Moreover, uncertainties created by the litigation leading to Pitt III, including the prior decision by the court of appeals in University of Pittsburgh v. Champion Products Inc., 686 F.2d 1040, 215 USPQ 921 (3d Cir.1982), led applicant, as expressed by Mr. Hove in a December 17, 1982 memo to Mr. Liethen, to question its stance:
Earlier this week I was in Chicago at a meeting with my counterparts from around the Big Ten. The Michigan State representative was talking about their recent move into licensing their university name, seal, athletic mascot, etc. I asked him how they could do this since what they were suddenly protecting had been in the public domain for such a long time. He claimed that a recent reversal of the lower court opinion in the Champion v. Pitt case has thrown out the public domain argument. According to him, it is now possible to control everything--including permission to use the name of your school on commercial items.
If this is the case, I feel we should rethink our position on this whole matter. There is a considerable amount of potential revenue to be realized from a licensing program....
What is important for present purposes is not whether applicant was correct in its belief that the subject marks were in the public domain and therefore could be used by anyone, but whether such position had the effect on the relevant purchasing public, including not just the ultimate consumers but also UBS, Brown's, certain additional WMF members and other retailers which have marketed apparel imprinted with the marks, of causing the marks to lose their significance as marks. There is nothing in the record which even suggests that opposers, in continuing to sell clothing and other merchandise bearing the marks at issue, have ever detrimentally relied upon applicant's statements to third parties that the marks were in the public domain nor, plainly, can opposers claim to have been influenced in their retailing activities by the position expressed in an internal memo circulated only among various administrators and divisions of the University. There also is nothing in the record which tends to suggest that any third party to whom royalty-free, nonexclusive permission to use the subject marks was granted by applicant ever used such marks in any manner other than as references to the University. Furthermore, and aside from applicant's contention that it was simply mistaken in its belief that the marks, although regarded by the purchasing public as identifying the University, were nevertheless in the public domain due to third-party usage, applicant tellingly observes that its statements with respect to such belief were not proclaimed to a large segment of the relevant public. Instead, its expressions that the subject marks were in the public domain were contained in only a few of the isolated, private responses it made to a relatively small number of inquiries. Most of the replies it sent made no mention of the public domain concept, yet the mere fact that inquiry was made or permission to use was sought tends to indicate that the correspondents recognized the marks as being associated with applicant.
*15 Opposers additionally fault applicant for failing to act against third-party users, including asserted infringers, and for a lack of effective quality control. In particular, opposers accuse applicant of failing to seek out and object to uses of the marks at issue or to take meaningful action with respect to instances of third-party use known to applicant. Opposers' contentions, however, ignore the reality of the symbiotic relationship which existed between the University and various businesses located in and around its Madison, Wisconsin campus. As mentioned earlier, the record is clear that applicant tolerated various uses by others of the marks it seeks to register as expressions in the business community of goodwill and support for the educational and entertainment services provided by applicant. The presence of the University, with its faculty, support personnel and large student population, provided in turn a significant source of customers for local businesses, including the bookstores run by UBS and Brown's as well as other firms which in large measure have catered to the various needs of persons at the University.
Moreover, as previously pointed out, with but a single insignificant exception, there is no evidence that the nature and quality of imprinted apparel displaying the subject marks has been anything other than, at a minimum, that which meets the standard of merchantable quality, even in the absence of a formal licensing program by applicant. While the record also reveals a few sporadic and short-lived instances of uses of the "Bucky Badger" image and/or name in ways which applicant and some members of the purchasing public found offensive or indecent, [FN37] applicant's standard of tastefulness, even if somewhat subjectively and at times haphazardly maintained, was effectively the norm.
Furthermore, as to applicant's actions and inactions with respect to investigation of third-party uses and enforcement of its claimed rights in the marks at issue, suffice it to say that it simply was not necessary, as noted earlier in this opinion, that applicant act against every use by nonaffiliated entities in order to avoid the risk of abandonment of the marks. Such uses, which applicant does not dispute, are simply not inconsistent or otherwise at odds with the subject marks maintaining their significance as marks identifying and distinguishing applicant's goods and services since none of the third-party users has been shown by opposers to offer goods or services that the relevant purchasing public would be likely to associate with or attribute to the University or, for that matter, to even colleges and universities in general. In short, while demonstrating that the "Bucky Badger" figure and the words "BADGER" and "BADGERS" are weak in the sense that they have been diluted by their use over many years on a variety of distinctly different goods and services, the evidence herein fails to establish, or even to raise a genuine issue, that the subject marks have lost their significance as marks for the particular goods and services for which applicant seeks registration. [FN38]
*16 Finally, opposers urge that there has been no fundamental change in the market for merchandise imprinted with the marks at issue which would justify applicant's adoption of its formal licensing program and excuse its asserted delay in claiming enforceable rights after many years of essentially regarding the marks as public property. [FN39] Aside from the fact that, as discussed above, the supposition concerning applicant's alleged delay and its belief that the marks were in the public domain do not entitle opposers to relief on their theory of abandonment, the record is clear that applicant had legitimate reasons for adopting a formal licensing program and including therein the subject marks. Not only was applicant increasingly concerned with the prospect of additional embarrassing, obscene or other inappropriate uses of the marks and potential product liability problems if the marks were used in connection with dangerous, unsafe or unauthorized products or events, but the entire nature of the market for merchandise imprinted with college and university indicia underwent a major change starting at about the end of the 1970s. While it is undisputed that, unlike the situation in Helpingstine, applicant has experienced only a steady rather than a sudden or sharp increase in the growth of sales of merchandise imprinted with indicia of the University, [FN40] the market as a whole for merchandise, including apparel, bearing major college and university insignia increased dramatically during the late 1970s and continued to grow appreciably throughout the 1980s. The substantial growth in the popularity of such items, and the resultant need by the colleges and universities affected thereby for tighter control over their names and other identifying symbols, caused applicant and other similarly situated institutions of higher learning to recognize that the protection and enforcement mechanisms offered by formal licensing programs were necessary in order to avoid the problems brought about by the fundamental change in the market for imprinted collegiate merchandise. Many of the producers of such goods likewise realized that to preserve the value or desirability of their merchandise, a formal system of licensing and enforcement, of the type provided by CCI/ICE, worked to their advantage and did so in spite of the higher prices caused by the imposition of licensing fees. Thus, rather than being merely a brazen attempt by applicant, as opposers insist, to bail out the deficit in its athletic department by depriving retailers of their accustomed profits on products imprinted with the subject marks, it is plain that applicant was simply acting within its rights inasmuch as the marks signified the University and continue to do so to a significant portion of the purchasers of such merchandise. [FN41] We also note in this regard that, significantly, the record plainly shows that no other college or university uses such marks. [FN42]
In summary, not only is it the case that none of the opposers, or any third party, has ever used the marks at issue as its own mark for the particular goods and services set forth in the applications involved in these proceedings, but the use thereby was tantamount to a royalty-free, nonexclusive, implied license from applicant which inured to applicant's benefit. Applicant tolerated uses of the marks, when their use in advertising and on clothing and other types of imprinted merchandise were plainly in reference to the University, as expressions of support for its athletic and academic programs by the business community. With but one inconsequential exception, the record is devoid of any evidence which even raises an inference that the quality of merchandise imprinted with the subject marks has ever been anything less than that of at least merchantable quality. Similarly, except for a few occasional and transitory incidents, clothing and other items bearing the marks at issue have reflected applicant's standard that such merchandise be in good taste. Applicant, in effect, has maintained adequate control over the nature and quality of the goods and services sold under the marks, both prior to and after the commencement of its formal licensing program with CCI/ICE, and has policed its marks in accordance with due regard for the scope of protection to which they are entitled.
*17 Consequently, while many third parties use or have used the "Bucky Badger" image and the words "BADGER" and/or "BADGERS" in connection with a wide variety of diverse businesses and activities which are distinctly different from the goods and services for which applicant seeks registration, such evidence demonstrates only that the marks are diluted and therefore weak. No other college or university uses the marks at issue and the evidence of third-party use, including that by entities at the high school level as well as various professional and social organizations, does not amount to proof that the marks have been abandoned in the sense that they have lost their significance as marks. In fact, although some members of the relevant purchasing public, mainly tourists and summer students attending the University from outside the State of Wisconsin, regard the subject marks as identifing the State of Wisconsin rather than or in addition to the University, there simply is no genuine issue that to a significant portion of the relevant purchasing public, the marks identify applicant as the primary source of its educational and entertainment services and as the secondary source of the apparel imprinted with such marks. This is particularly so among purchasers residing within the State of Wisconsin and is especially true the closer one gets to the area in and around Madison, where the University has its campus. Opposers essentially concede that such is the case by admitting, on the 93rd (and notably last) page of their initial brief, that "[t]he most the University has established in these proceedings is that some people associate the Marks with it". Plainly, in these circumstances, the marks have not lost all significance as marks for applicant's goods and services and therefore, as a matter of law, have not been abandoned.
Primarily Geographically Descriptive
Considering next opposers' claim that the mark "WISCONSIN BADGERS" is primarily geographically descriptive when used in connection with applicant's goods and services, we observe that in order for registration to be properly refused on such ground, it is necessary to establish that (i) the primary significance of the mark sought to be registered is the name of a place generally known to the public and (ii) the public would make a goods/place association, that is, believe that the goods and services for which the mark is sought to be registered originate in that place. See, e.g., In re California Pizza Kitchen Inc., 10 U.S.P.Q.2d 1704, 1705 (TTAB 1988), citing In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 3 U.S.P.Q.2d 1450 (Fed.Cir.1987). In the present case, it is undisputed that applicant renders its educational and entertainment services in the State of Wisconsin and that some items of apparel, although not manufactured there, originate in the State of Wisconsin in the sense that garments bearing the "WISCONSIN BADGERS" mark are imprinted within the state by the licensed producers thereof. Thus, because such goods and services come from the State of Wisconsin, there is no real issue that a goods/place association would be made by the public if the mark, as a whole, projects a geographical significance. The principal point of contention between the parties accordingly concerns whether the primary significance of the mark is geographical in that it connotes a place known generally to the public. [FN43]
*18 Opposers argue that the terms "WISCONSIN BADGERS" and "BADGERS" are synonymous, noting on the 84th page of their initial brief that the latter "was first used to refer to residents of Wisconsin no later than the 1830s, and it has been continuously associated with the state and its residents since then". In particular, opposers declare on page 85 of such brief that:
[T]he evidence in this case indicates that "Wisconsin Badgers" is and always has been primarily geographically descriptive rather than indicative of the University as a source of goods and services. "Badger" and "Badgers" have been used by businesses throughout Wisconsin as part of their names, and in some cases as trademarks for goods and services. .... Representatives of many of these businesses have testified that they use "Badger" and "Badgers" mainly because the terms show an association with Wisconsin. .... The University's assertion that "Badgers" "does not denote a geographic location to reasonably informed customers" (University Brief p. 84) would come as a surprise to these witnesses, to most people in Wisconsin and to anyone who is at all familiar with the state. ....
Applicant, on the other hand, maintains that the mark "WISCONSIN BADGERS" is not in any sense geographical since it does not designate a geographic location. Instead, according to applicant, while the mark may literally signify the plural of the state animal of Wisconsin, any geographical association thereof with applicant's goods and services would be obscure, remote or lacking entirely.
As pointed out previously in this opinion, Wisconsin is nicknamed the "Badger State" and its state animal, since being so declared by the legislature in 1957, is officially the badger (taxidea taxus). The association of the badger name and animal with the State of Wisconsin has its roots in the state's early history. The record reveals, as set forth principally in the affidavit and attached exhibits, furnished by opposers, of Marquette University history professor Karel D. Bicha and the declaration and accompanying exhibits, submitted by applicant, of Lawrence Barish, who is one of the directors of the Wisconsin Legislative Reference Bureau and the editor of its biennial publication known as the Wisconsin Blue Book, that the name "badgers" was first applied to lead miners in the southwestern portion of the Wisconsin Territory. Specifically, during the mining boom which began just prior to 1830, the early prospectors, who were too busy extracting the lead ore to build houses, fashioned dugouts or makeshift burrows in the area's hillsides and ravines and utilized such for shelter. This activity was likened to the burrowing habits of the badger, an animal indigenous to but never numerous in the region, and the lead-mining settlers acquired the sobriquet "badgers". Although, at first, the name "badgers" had a somewhat derogatory connotation, it later came to denote all inhabitants of the lead-mining region and, eventually, all residents of Wisconsin. According to Professor Bicha's research (emphasis in original):
*19 Within a decade after 1834, the term "badger" lost its explicit connection with a single occupational group and a constricted locale. In a subtle but pervasive manner the term literally metamorphosed and came to denote all of the residents of territorial Wisconsin. ....
.... [Thus,] a "Badger" was merely a Wisconsinite, not necessarily a lead miner or resident of the lead region. ....
While the record also establishes that the term "Badger" has significance as a surname, [FN44] Professor Bicha's historical review significantly notes that, "[e]xcept for a 'Badger Hollow' in Iowa County, [Wisconsin,] possibly named for human inhabitants, the geographical nomenclature of the lead region is 'badger'-free" (emphasis in original). [FN45]
With respect to other uses thereof, Professor Bicha further reports that business interests appropriated the "badger" nomenclature early in the history of the State of Wisconsin and that the term has been employed "with some frequency" for over 150 years. Newspapers and periodicals have used the word "badger" in their titles and, even more commonly, it has appeared in the names of various manufacturing, financial and service enterprises. As to use of such term in connection with the University, Professor Bicha states that (footnotes omitted; emphasis in original):
Among the non-commercial interests to adopt the "badger" sobriquet ... were certain groups associated with the University of Wisconsin. Chartered in 1848, the University existed for more than a generation free of any association with "badger" imagery. The first use of the term "badger" by any group affiliated with the University occurred in 1882. In that year a group of students, disenchanted with the existing student newspaper, The University Press, created a rival organ, The Badger. Neither flourished ... and in 1885 the two papers merged as The University Press and The Badger. .... Three years later, in 1888, "Badger" reappeared as the title of the University student's yearbook, a title it has retained to the present day. It is important to note that these student publications operated independent of any control by the officially constituted authorities of the University--faculty, administration, or regents. The regents purchased advertising in the yearbook, and perhaps in this indirect manner may have kept the publication afloat. But the publications were private enterprises.
Similar conditions also prevailed in the area of athletics. Though baseball at the [U]niversity dated from the 1870s, intercollegiate athletic competition in most sports at Wisconsin commenced in 1890. By 1893, the fourth year of competitive athletics, Madison newspapers began to refer to the football team as the "Badgers".
Students were slow to embrace the nickname, and its use in athletics grew slowly and sporadically. Moreover, in the years 1890-1906, control of the organization, scheduling and finances of competitive athletic organizations at Wisconsin resided in a Student Athletic Association free of any official connection with the [U]niversity. .... It was not until 1906, after a faculty investigation of professionalism and corruption in intercollegiate competition, that the faculty wrestled control of athletics from the students. A measure of control over student journalism soon followed. No official component of the [U]niversity, therefore, could claim a fiduciary relationship with the athletic use of "badger" until 1906. By that year the term had been used as a synonym for residents of Wisconsin for nearly 75 years.
*20 It is apparent from the above that due to the variety of the common or generally well-known meanings for the word "BADGER" which are shared by its plural "BADGERS," the primary significance to the public of the mark "WISCONSIN BADGERS," when considered in its entirety, cannot be said to be geographical. [FN46] Whether taken literally as designating certain feisty, burrowing animals found within the State of Wisconsin or figuratively as a redundant moniker for residents of that state, it is plain that the mark "WISCONSIN BADGERS" would not be perceived as naming or specifying a particular geographic location and thus fails to signify a place generally known to the public. Accordingly, while suggestive of the State of Wisconsin, due not only to the state name but also to the long association of the word "badger" as a nickname for residents of the "Badger State" and the fact that the badger is the official state animal, we agree with applicant that, based upon the undisputed material facts, the mark "WISCONSIN BADGERS" is not primarily geographically descriptive of applicant's goods and services as a matter of law.
Finally, as to the issue of aesthetic functionality, opposers contend that, as supported by the affidavits from, among others, Mr. Epple and persons associated with Brown's, such as its current president, Richard C. Rust, and a former manager, Richard La Bonne, clothing imprinted with the "Bucky Badger," "Bucky on W" and "WISCONSIN BADGERS" marks defines a separate and distinct category of apparel; that such marks are aesthetically functional since consumers buy such apparel, not because they care about the quality of the goods or whether the University sponsors or endorses the products, but because they desire the particular marks emblazoned thereon and wish to show their support for the University; and that in order to compete effectively in the market for apparel imprinted with such marks, continued free use thereof by opposers--which is diametrically at odds with registration of the marks by applicant--is essential. Opposers further assert, in this regard, that the marks at issue are not identified with a single source, claiming on page 81 of their initial brief that while "[s]ome consumers identify them with the University, some [identify them] with the state of Wisconsin".
Applicant, on the 80th page of its initial brief, admits that its "licensees confirm that imprinting the University's marks on their products increases the demand for these products," but maintains, however, that "matter is not made functional as a matter of law because it contributes to the consumer appeal and salability of the product". Instead, according to applicant, so long as words or designs imprinted prominently on a garment or other product identify a particular source to the public, including a secondary source, such insignia are protectable and registrable irrespective of considerations of how attractive or aesthetically pleasing purchasers find the ornamentation, how much the words or designs contribute to the commercial success of the product or what the intent of consumers is in making their purchasing decision. Applicant urges that the record in these proceedings shows that the public perceives the University as the secondary source of apparel imprinted with "Bucky Badger" designs and/or the words "WISCONSIN BADGERS". Furthermore, applicant argues that there are an essentially limitless number of appealing designs and phrases which may instead be used to merchandise T-shirts and other items of imprinted clothing and that the subject marks are not so uniquely attractive as to deprive consumers of competitive alternatives. Applicant, therefore, insists that the doctrine of aesthetic functionality does not preclude registration of the marks at issue.
*21 There is no question that so-called "collateral uses" of the marks by its licensees on imprinted apparel and other merchandise constitute an extension of the rights, recognized by a significant portion of the purchasing public, that applicant has long possessed in the "Bucky Badger," "Bucky on W" and "WISCONSIN BADGERS" marks for its educational and entertainment services in general and athletic contests featuring the University's sports teams in particular. Citing, inter alia, certain decisions of the Board involving the registration of collateral uses of marks in connection with clothing, [FN47] 3 J. McCarthy, McCarthy on Trademarks & Unfair Competition § 24.03[a] (3d ed. 1994) offers the following discussion (footnotes omitted; emphasis in original):
As to such uses, it has been held that trademarks can serve to identify and distinguish a "secondary source" in the sense of indicating sponsorship or authorization by a recognized entity. For example, the mark of a university on clothing can signify that the university endorses and licenses the sale of such wearing apparel by the manufacturer. ....
That the logos or marks of educational, entertainment or commercial entities may also be visually pleasing when used on wearing apparel does not mean that they are automatically incapable of trademark significance as "functional". It is a question of fact as to whether consumers view such indicia as "merely ornamental" or as symbols that identify a secondary source of sponsorship.
In addition, as pointed out by the majority in In re DC Comics, Inc., 689 F.2d 1042, 215 USPQ 394, 397 (CCPA 1982), a broad definition of aesthetically "functional features" which embraces any aspect of a product that is an important ingredient in the commercial success of the product is "at odds with this court's precedent in this area". Judge Rich, in his concurring opinion, observed that viewing a design as aesthetically functional merely because it constitutes what the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored or endorsed the product bearing the design, is improper since "[i]f a design which is sought to be protected as a trademark can be demonstrated to so function, it will be protected as a trademark; it will not be said that its only function is as an aesthetically pleasing design". 215 USPQ at 400. Judge Nies, specially concurring, added that (emphasis in original):
The principle [or truism] that a trademark must indicate "source" and not "goods" does not condemn single product word marks or designs. A word, name, symbol or device indicates "source" within the meaning of the truism if it indicates goods of one producer to the public, and it indicates "goods" if the public does not identify the asserted mark with goods from a particular source. .... Once it is understood that a trademark is functioning to indicate "source" when it identifies goods of a particular source, the truism then reflects the ... objectives of trademark law and the way trademarks actually function in the marketplace. The reason the public is motivated to buy the product, whether because of quality, particular features, source, pleasing design, association with other goods, price, durability, taste, or prestige of ownership, is of concern to market researchers but is legally immaterial ... [and] ignores the reality that the primary objective of purchasers is to obtain particular goods, not to seek out particular sources or producers, as such. ....
*22 215 USPQ at 404.
In light of the above, and assuming for the sake of argument that aesthetic functionality is a valid basis for opposing registration, [FN48] we concur with applicant that the marks at issue are not aesthetically functional as used in connection with clothing. While, especially in the case of apparel imprinted with designs featuring "Bucky Badger," it is undisputed that many purchasers buy such garments because they find "Bucky" to be "cute" or otherwise appealing and do not care about the particular quality of the goods or whether the University sponsors or endorses them, these facts are legally immaterial. That is to say, the fact that consumers buy a T-shirt, sweatshirt or other garment because they like and want the particular "Bucky Badger," "Bucky on W" or "WISCONSIN BADGERS" design imprinted thereon does not render such designs aesthetically functional. Taken to its logical conclusion, opposers' argument would eliminate trademark protection and registrability for any popular and commercially successful design which is imprinted on clothing, irrespective of whether the design additionally is source-indicative to at least some consumers. Here, opposers essentially concede the fact, and we concur that there is no genuine issue, that the record demonstrates that to a significant segment of the purchasing public, the subject marks signify applicant as the secondary source for apparel imprinted with those marks. Thus, while it is also true that to some purchasers, the marks indicate the State of Wisconsin rather than or in addition to the University, the undisputed fact remains that a significant portion of the purchasing public associates the marks with applicant as a particular source for the goods. The marks at issue are therefore not aesthetically functional. Cf. Boston Professional Hockey Ass'n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004, 185 USPQ 364, 370 (5th Cir.1975), cert. denied, 423 U.S. 868, 187 USPQ 480 (1975).
Accordingly, for the above reasons, applicant's motion for summary judgment is granted and opposers' cross motion for summary judgment is denied. Fed.R.Civ.P. 56(c) and (e). The oppositions are consequently dismissed with prejudice.
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Ser. No. 74/065,180, filed on June 4, 1990, which alleges dates of first use of 1953 and recites that: "The lining on the drawing is a feature of the mark and is not intended to indicate color". The "Bucky Badger" mark for apparel is the subject of Opposition No. 84,223.
FN2. Ser. No. 74/078,135, filed on July 13, 1990, which alleges dates of first use of March 1989 and states that: "The lining in the drawing is a feature of the mark and does not indicate color". The "Bucky on W" mark for apparel is the subject of Opposition No. 84,789.
FN3. Ser. No. 74/065,181, filed on June 4, 1990, which alleges dates of first use of 1960 and includes, with respect to the "WISCONSIN" portion of the mark, a claim for registration under Section 2(f) of the Trademark Act "because Applicant believes [that] WISCONSIN has become distinctive as applied to Applicant's goods by reason of substantially exclusive and continuous use in interstate commerce [by Applicant] for at least the five years before the filing of this application". The "WISCONSIN BADGERS" mark for apparel is the subject of Opposition No. 84,224.
FN4. Ser. No. 74/065,183, filed on June 4, 1990, which alleges dates of first use of 1940 and recites that: "The lining on the drawing is a feature of the mark and is not intended to indicate color". The "Bucky Badger" mark for educational and entertainment services is the subject of Opposition No. 84,288.
FN5. Ser.No. 74/078,040, filed on July 13, 1990, which alleges dates of first use of September 1989 and states that: "The lining on the drawing is a feature of the mark and is not intended to indicate color". The "Bucky on W" mark for educational and entertainment services is the subject of Opposition No. 84,290.
FN6. Ser. No. 74/065,188, filed on June 4, 1990, which alleges dates of first use of 1920 and includes, with respect to the "WISCONSIN" portion of the mark, a claim for registration under Section 2(f) of the Trademark Act "because Applicant believes [that] WISCONSIN has become distinctive as applied to Applicant's services by reason of substantially exclusive and continuous use in interstate commerce by Applicant for at least the five years before the filing of this application". The "WISCONSIN BADGERS" mark for educational and entertainment services is the subject of Opposition No. 84,289.
FN8. Both UBS and Brown's are members of WMF, which has its principal place of business at 30 West Mifflin Street, Madison, Wisconsin. WMF is assertedly engaged in reporting to its members on the activities of various legislative bodies and agencies and presenting its members' views to such entities.
FN9. Opposers use the term "Board of Regents" in their pleadings to refer collectively to applicant and any person or entity associated therewith.
FN10. Inasmuch as Fed.R.Civ.P. 8(f), which is made applicable by Trademark Rule 2.116(a), provides that "[a]ll pleadings shall be so construed as to do substantial justice," such ground will be treated as a claim under Section 2(e)(2) of the Trademark Act that the mark "WISCONSIN BADGERS" is "primarily geographically descriptive" when used on or in connection with applicant's goods and services.
FN11. Since such ground appears, in light of the nature of the evidence presented and the arguments in opposers' initial brief, to be more than a claim of mere ornamentation, it is accordingly construed as a pleading of aesthetic functionality. Fed.R.Civ.P. 8(f).
FN12. By various stipulated requests approved by the Board, opposers were allowed until November 19, 1992 to respond to applicant's motion and applicant, in turn, was allowed until February 16, 1993 to respond to opposers' cross motion.
FN13. Opposers, on April 13, 1993, timely submitted an objection to applicant's motion, filed on April 2, 1993, for leave to file its surreply brief. While opposers argue that applicant's surreply brief "contains no new arguments, and it does not cite any authorities which Applicant could not have cited in previous briefs," we believe that in light of opposers' contention in their reply brief that vacated decisions, in certain circumstances, may nevertheless retain precedential value merits the exercise of our discretion in favor of consideration of the further brief commentary provided by applicant. Accordingly, applicant's motion for leave to file its surreply brief is granted.
FN14. Opposers, in their response to applicant's motion and as part of their cross motion, have urged the Board "to decide the merits of this controversy based upon the cross motions for summary judgment and supporting materials". Although applicant has not joined in such request, opposers maintain that:
Cross motions for summary judgment permit a court to assume that there is no evidence to be considered other than that which has been filed by the parties. See Harrison Western Corp. v. Gulf Oil Co., 662 F.2d 690, 692 (10th Cir.1981) and United Nuclear Corp. v. Cannon, 593 F.Supp. 1220, 1226 (D.R.I.1982).
Here, the cross motions for summary judgment show that the parties agree for the most part on the issues which will be determinative of these proceedings. Opposers have presented materials which contain the bulk of the evidence Opposers would present as their trial testimony in these proceedings. Opposers believe that the evidence presented by the University in support of its summary judgment motion constitutes the bulk of the evidence that the University would present as trial testimony. Thus, this dispute may be adequately resolved without further proceedings.
Obviously, if we find that no material facts are genuinely in dispute, disposition by summary judgment is feasible since we need only apply the relevant law to the undisputed facts. Moreover, in certain limited situations, it has been pointed out in 10A C. Wright, A. Miller & M. Kane, Federal Practice & Procedure § 2720 (1983) at 26-27 that (footnote omitted):
[I]t should be noted that when the court is ruling on cross-motions, the facts sometimes become fully developed at the hearing on the motions. When this occurs in a nonjury case the court may proceed to decide the factual issues and render a judgment on the merits without any further delay if it is clear that there is nothing else to be offered by the parties and there is no prejudice in the court proceeding in this fashion. As a practical matter, of course, this procedure amounts to a trial of the action and technically is not a disposition by summary judgment.
Consequently, while at times opposers' appear to argue in their response that there are genuine issues of material fact which preclude the entry of summary judgment in favor of applicant but that no such issues exist with respect to rendering summary judgment in favor of opposers, we note as a practical matter that in view of opposers' invitation that the Board nevertheless decide the merits of these proceedings based upon the record currently before it, there would seem to be no impediment--at least insofar as opposers are concerned--to our possibly disposing of the oppositions in a manner adverse to opposers by deciding the facts and, if appropriate, granting applicant's motion for summary judgment and denying opposer's cross motion. The converse, however, would not be the case. That is, if we were to find that there otherwise is at least one material fact genuinely in dispute which, if resolved in favor of opposers rather than applicant, would result in summary judgment for opposers as a matter of law, it would not be appropriate to deny applicant's motion and grant opposers' cross motion. Instead, opposer's cross motion would have to be denied and a trial would be necessary in order to allow applicant the opportunity to present its case with respect to any material fact in dispute.
FN15. Opposers, with the aid of an affidavit from John Bunge, president of a litigation survey firm known as Legal Marketing Research, Inc., have raised numerous objections to the survey which accompanies the affidavit of Norman Passman, chairman of the market research firm of Guideline Research Corporation. Although applicant, in response, has submitted the declaration of David Flanagan, an assistant attorney general with the Wisconsin Department of Justice, which appears to show that in another survey, Mr. Bunge employed essentially the same questioning techniques as Mr. Passman and thus Mr. Bunge's criticism of the Passman survey is unwarranted, we are constrained to agree with opposers that the survey by Mr. Passman, which he principally designed and conducted for Guideline Research Corporation on behalf of applicant, is unreliable since, at the very least, it employed leading questions in its attempt to measure the level of secondary meaning associated with each of the marks applicant seeks to register. Accordingly, we have given the Passman survey, as well as Mr. Passman's remarks with respect to the findings and conclusions to be drawn from the survey, no weight in our disposition of the parties' motions.
FN16. Applicant, in reply, has objected that many of the affidavits contain hearsay statements. While opposers maintain to the contrary in their reply, we are constrained to agree with applicant that the statements objected to are hearsay within the meaning of Fed.R.Evid. 801. However, as applicant appears to realize, many of the statements are indicative of a consumer's state of mind and, thus, need not be excluded since they fall within the scope of the state of mind exception to the hearsay rule. Fed.R.Evid. 802 and 803(3). Nevertheless, we hasten to note that irrespective of whether any hearsay statements are excluded, the result in these proceedings would be the same.
FN17. Specifically, with respect to Appeal No. 83-5537, opposers have furnished copies of an October 28, 1983 Settlement Agreement, a Joint Motion to Dismiss Appeal, and an Order of the U.S. Court of Appeals for the Third Circuit dismissing the appeal, vacating as moot the judgment of the district court in Civil Action No. 81-2167 and remanding the case to such court for dismissal of the complaint. Such papers are accompanied by a copy of the page pertaining to the Federal Supplement citation for Pitt III from a relatively recent issue of Shepard's Federal Citations.
FN18. Applicant, in its reply, has objected to the evidence of use of versions of the "Bucky Badger" figure by the Badger Conference and Niagara High School on the basis that such evidence was not disclosed by opposers in response to applicant's discovery requests therefor. However, since applicant has failed to substantiate its objection by furnishing copies of any discovery requests for such information and the responses thereto by opposers, the objection must necessarily be overruled. In any event, applicant has submitted declarations in which the declarants, a former assistant to the Chancellor of the University and the University's current licensing director, contend that they (and hence applicant) had not been aware of such use.
FN19. Examples of such businesses include a bowling alley, a fence company, a trucking firm, a commercial and charter bus company, a locksmith and security firm, an automobile parts wholesaler, a producer of industrial sand and limestone, a radiator repair firm, a snack food wholesaler, a medical supply firm, a self-storage facility, a balloon delivery service, a food canning company, a restaurant/bar and social club, a wholesale food distributor, a moving company, a dental practice, and a company which imprints and sells apparel.
FN20. Although we observe that many of the badger figures or images in the record are not, strictly speaking, representations of the particular "Bucky Badger" character for which registration is sought, we have treated such usages for purposes of summary judgment as if they were representations of "Bucky" since the parties in their briefs have done so.
FN21. Opposers also assert in their initial brief that because applicant did not create any of the marks it seeks to register and thus was not the first to adopt and use them, applicant is not the "owner" of the marks within the meaning of Section 1(a) of the Trademark Act and therefore is not entitled to register them. However, we note that lack of ownership of the marks, as of the filing dates of the applications, is not a pleaded claim. Nevertheless, even if we were to deem the pleadings to be amended, by agreement of the parties, so as to thereby avoid the fact that summary judgment cannot be obtained on a nonpleaded ground, see, e.g., Medtronic, Inc. v. Pacesetter Systems, Inc., 222 USPQ 80, 81 (TTAB 1984) at n. 3 and Intermed Communications, Inc. v. Chaney, 197 USPQ 501, 503 (TTAB 1977) at n. 2, a claim that applicant is not the owner of the marks would not be well taken. As pointed out in American Stock Exchange, Inc. v. American Express Co., 207 USPQ 356, 364 (TTAB 1980), an entity may have "a protectable property right in [a] term even if the company itself has made no use of the term" provided that the public has come to associate the term with the entity or its goods or services. Here, there is no genuine issue that the public, as well as applicant itself and even opposers UBS and Brown's, have used the marks at issue to refer to applicant and the particular goods and services for which registration is sought. There is accordingly no question as to applicant being the owner of the marks, even if others first adopted and used the marks, since such uses were not as marks to identify and distinguish their own products and services, but were instead references to applicant.
FN22. Such act amended the definition of "Abandonment of mark" in relevant part to include the phrase "otherwise to lose its significance as a mark" in place of the language "to lose its significance as an indication of origin". The legislative history behind such change indicates that it was simply for purposes of modernizing and tightening the definition, so as to provide clarification and consistency with other provisions of the Act, and that it was not a substantive change. See Senate Judiciary Comm. Rep. on S. 1883, S.Rep. No. 515, 100th Cong., 2d Sess. 43 and 45 (1988), reprinted in United States Trademark Association, The Trademark Law Revision Act of 1988, 195 and 197 (1989). As the Board noted in Commodore Electronics Ltd. v. CBM Kabushiki Kaisha, 26 U.S.P.Q.2d 1503, 1506 (TTAB 1993) at n. 7, S. 1883 ultimately became the Trademark Law Revision Act of 1988 (Public Law 100-667, November 16, 1988).
FN23. The court, citing legislative history, also pointed out that the particular portion of the definition of abandonment with which we are concerned "was principally intended to encompass acts of omission or commission ... which resulted in the mark becoming a generic term". 214 USPQ at 337 n. 13. There is no claim by opposers that any of the marks applicant seeks to register is generic.
FN24. Trademark Clarification Act of 1984 (Public Law 98-620, November 8, 1984).
FN25. In addition to the information set forth in the first sentence of footnote 17 of this opinion, we observe that as reported (for instance) in 1 J. McCarthy, McCarthy on Trademarks & Unfair Competition § 3.02 (3d ed. 1994) at n. 7, the judgment in favor of the defendant, Champion Products, Inc., was "vacated by Order of February 2, 1984 on mandate from court of appeals".
FN26. The court, in this regard, expressed the position that:
The relevant product market for the consumer in this case is soft goods which allow the consumer to show his or her allegiance to Pitt. There is no evidence that the consumer cares who has made the soft goods or whether they were made under license. Because the Pitt insignia on soft goods serve a functional purpose and largely define a sub market of some size, granting Pitt the relief it seeks would give Pitt a perpetual monopoly over that sub market, precluding any competition in the Pitt insignia soft goods market. We know of no legal theory which would countenance such a result.
219 USPQ at 843.
FN27. Specifically, the court rejected the argument that the University of Georgia Athletic Association had abandoned its "University of Georgia Bulldog" mark by failing to protect it diligently against third-party uses. 225 USPQ 1127 at n. 17.
FN28. See, e.g., Siegal, Legal Issues Facing Collegiate Licensing Administrators, 11 Licensing J. 3, 3-6 (1991), filed by applicant as Exhibit C to the affidavit of Bruce B. Siegal, corporate counsel for its licensing agent, CCI/ICE.
FN29. The record reveals that the creative talents of Mr. Evans were also employed in the design of such other familiar collegiate caricatures as the North Carolina State University wolf, the University of Texas longhorn and the University of Minnesota gopher.
FN30. At the time of Bucky's creation, the University was a collegiate boxing power and generally remained so until about 1960, when the ring-related death of one of the University's boxers prompted the abolition of boxing as an intercollegiate sport.
FN31. While it is undisputed that the "Bucky Badger" figure was by then well established as the mascot for the University's athletic teams, it was not until the 1949 Homecoming football game that a name for the mascot was chosen. As part of the homecoming festivities, The Pep Committee sponsored a contest to name the mascot, but none of the names suggested by the various student organizations which were invited to participate seemed fitting. The Pep Committee therefore came up with its own recommendation and announced such name as the contest winner. As reported on the front page of the November 12, 1949 edition of the Wisconsin State Journal: "The cocky, little fellow who adorns all Wisconsin publicity material, and who is the university's official mascot [,] was christened 'Buckingham U. Badger,' alias 'Bucky,' at the Homecoming Pep Rally Friday". The name "Buckingham," which was immediately shortened to "Bucky," apparently was derived from England's Buckingham Palace, which was then in the news because of preparations for the Festival of Britain celebration.
FN32. The particular logo, which is so referred to since its development was instigated by the University's Division of Intercollegiate Athletics for use as a source of licensing revenue, is the subject of two registrations owned by applicant. Reg. No. 1,636,223, which issued on February 26, 1991 and sets forth dates of first use of 1979, covers various items of apparel, while Reg. No. 1,637,177, which issued on March 5, 1991 and indicates dates of first use of 1979, lists the identical services recited in the service mark applications involved in these proceedings. Each registration states that the lining on the drawing is a feature of the mark, which is illustrated below, and is not intended to represent color:
FN33. Testimony in the discovery deposition of a former athletic director at the University, Adryn Sponberg, briefly mentions a once popular T-shirt imprinted with a design, featuring "Bucky," which washed out after being laundered only a few times.
FN34. While the record additionally reveals that a company, Madison Top, Inc., imprints and sells apparel bearing the subject marks, the record also indicates that the firm is now a licensee of applicant.
FN35. Although not explicitly stated in the recitation of services, it is implicit from the words "University of Wisconsin" in applicant's name that the sports exhibition entertainment services listed in the involved applications pertain exclusively to intercollegiate athletics and do not include the distinctly different level of competition associated with high school athletics.
FN36. That, like applicant, certain social and professional associations, along with other businesses such as a bowling alley and a restaurant/bar utilize imprinted T-shirts and other items to promote their organizations does not mean that the subject marks have been abandoned by applicant. The record is clear that such uses, due to the significant differences in the principal activities of the various third parties, would not be regarded by the relevant public as emanating from the same source and that, in each instance, use of the "Bucky Badger" figure and/or the terms "BADGER" or "BADGERS" function(s) as an indication of origin for the respective groups and businesses.
FN37. The chief example thereof concerns the sale during the mid-1980s of a T-shirt featuring "Bucky" "giving the finger" and bearing a correspondingly vulgar slogan. Sales thereof, by vendors unconnected with applicant, principally occurred in the fall outside the University's Camp Randall football stadium, although some of the shirts were also available in stores. Such sales provoked complaints to applicant primarily from alumni and parents of young children, who thought that applicant sponsored, endorsed or otherwise condoned the shirts and that the message conveyed thereby was inappropriate. Unlike the case of sales by an enterprising student at the University of "GET LUCKY, BUCKY" condoms, which ended shortly after a dean had a heart-to-heart chat with the entrepreneur and expressed applicant's objection to the use of "Bucky" in such a manner, applicant unsuccessfully tried various means to stop sales of the offending T-shirts, including imploring the district attorney (who declined out of First Amendment concerns) to take action against infringing vendors. Nevertheless, after awhile, sales thereof quickly decreased and eventually ceased once the novelty of such shirts among the profane wore off.
FN38. The record reveals that, rather than being timid or otherwise loath to take action where warranted, applicant has long realized that the scope of protection for the marks has been circumscribed and is effectively limited to situations in which third parties utilize the marks in such a manner that they would be understood by the public to refer to the University. This attitude on applicant's part has continued with its adoption and participation in the formal licensing program administered by CCI/ICE. Specifically, as set forth in Exhibit 15 to Mr. Siegal's discovery deposition, submitted by opposers as part of Exhibit 14 to the affidavit of one of their attorneys, Joseph A. Ranney, a former Chancellor of the University, Donna E. Shalala, states in a July 22, 1988 letter to a Wisconsin legislator who had written for information concerning applicant's formal licensing program that, as to the scope of such program:
The program applies only to the UW-Madison, and the program is limited to include only those names, symbols and designs in which the UW-Madison has a proprietary interest. This includes those marks which the UW-Madison developed as well as those marks that have come to be associated with the UW-Madison. The "Bucky Badger" mascot is perhaps the best known.....
We emphasize that our interest is limited to protecting these marks when they imply obvious reference to the University of Wisconsin-Madison..... The coverage of the licensing program will only extend into areas in which the UW-Madison has a legitimate proprietary interest, and not into areas that would subject the program to bona fide defenses in a litigation context.....
We have no desire to claim rights to any symbols, logos, or slogans which are not associated with the UW-Madison. We believe that it is relatively easy to distinguish between a design that refers to the State of Wisconsin and one that refers specifically to the UW-Madison. Color, graphics, geographic area and intent of the seller all must be taken into consideration. For example, use of the word "badger" in many Wisconsin state contexts would obviously not be considered a proprietary interest of the UW-Madison, notwithstanding our proprietary interest in the "badger" mark in a UW-Madison context.
FN39. While opposers, in their initial brief, appear to argue that applicant is guilty of laches, acquiescence and/or estoppel as a result of a pattern of longstanding inaction which allowed UBS, Brown's and certain other members of WMF to continue to sell a wide variety of apparel and other merchandise imprinted with the subject marks without objection from applicant, we have treated such assertion as an aspect of opposers' contention that the subject marks have, through applicant's conduct, lost all significance as marks. Suffice it to say that irrespective of whether equitable defenses such as laches, acquiescense and/or estoppel might absolve opposers of liability if applicant should bring a suit for infringement (a question upon which we express no opinion), equitable defenses are just that--defenses--and are not grounds for opposing registration.
FN40. The reason therefor is explained by the fact that applicant, during such period, was neither a prominent athletic power with many nationally ranked teams nor was its general reputation or following, despite a large number of graduates, truly national in scope.
FN41. We observe in this respect that applicant presently has several hundred licensees and that, virtually without exception, the current examples offered by opposers of uncontrolled third-party use of the marks on imprinted apparel are actually, as demonstrated by applicant, licensed uses over which applicant and its licensing agent, CCI/ICE, exert satisfactory quality control.
FN42. Although, as to the "Bucky Badger" mark, applicant furnished its discovery deposition of the president of UBS, John H. Epple, in which he testified that, based upon an imprinted plastic cup he had seen from a salesperson employed by one of his suppliers, he knew that the "Bucky Badger" mark was being used by Grove City College in Pennsylvania to identify itself as the source of sports exhibitions, applicant submitted with its reply brief the declaration of the vice president for external affairs of such college, Deena L. Philage. Refuting Mr. Epple's testimony, Ms. Philage states among other things that Grove City College is a liberal arts institution of approximately 2,250 students which is located in Grove City, Pennsylvania; that its "college mascot is a wolverine, affectionately known as 'Willie Wolverine' "; that due to some miscommunication or confusion, a 1988 order by its campus bookstore with a California company for 250 plastic cups resulted in the delivery of cups bearing a design which, except for the letters "GCC" in place of the letter "W," was identical to the "Bucky Badger" image used by applicant; that such cups are now gone; that the college does not intend to reorder or to sell any items imprinted with such badger design in the future; and that the college has never intended to use the badger design as a trademark or service mark. Moreover, except for undocumented assertions by several individuals that the designation "WISCONSIN BADGERS" is also used by applicant's women's basketball team at its branch in Whitewater, Wisconsin, it is clear that the sole entity using the "WISCONSIN BADGERS" mark is the University, i.e., applicant's principal campus at Madison.
FN43. Opposers also assert that applicant has not demonstrated that the "WISCONSIN BADGERS" mark possesses the requisite secondary meaning so as to permit registration thereof on the Principal Register. Assuming, arguendo, that the mark is primarily geographically descriptive of applicant's goods and services within the meaning of Section 2(e)(2) of the Trademark Act, we find that there is no genuine issue that the mark has nevertheless acquired distinctiveness and therefore would be registrable on the Principal Register under the provisions of Section 2(f) of the statute. Contrary to opposers' contention, the long and continuous uses of the mark by applicant for its goods and services, by the media in reference to applicant and its services, and by applicant's licensees in the marketing of imprinted apparel are sufficient to establish that the mark has acquired secondary meaning which would entitle applicant to the registrations it seeks even if the mark would otherwise be regarded as primarily geographically descriptive.
FN44. As shown by the trademark search report commissioned by opposers' counsel which accompanies their submission of the affidavit of the director of research for Trademark Research Corporation, Denise Buscarnera, many individuals in the United States share the surname "Badger".
FN45. We observe from Exhibit E to Mr. Barish's declaration that maps in the Wisconsin Blue Book 1991-1992 at 18 and 522 show that Iowa County is west of and adjacent to Dane County. Dane County, as shown by a map of Wisconsin filed by opposers as Exhibit 22 to Mr. Ranney's affidavit, surrounds the City of Madison.
FN46. The mark at issue should be contrasted with situations involving marks like "WISCONSIN," "WISCONSIN MADE," "WISCONSIN APPAREL" or "UNIVERSITY OF WISCONSIN". In the latter instances, the primary significance of the marks as applied to applicant's goods and services would be geographical due to the fact that in each example the term "WISCONSIN," whether used with or without merely descriptive or generic matter, would connote in the mark as a whole only a geographic location. The same is not the case for the mark "WISCONSIN BADGERS" since, while the term "WISCONSIN" undeniably has geographical significance, the mark in its entirety primarily signifies something other than the geographic locale named by such term.
FN47. The cases are: In re Paramount Pictures Corp., 213 USPQ 1111 (TTAB 1982); In re McDonald's Corp., 199 USPQ 702; and In re Olin Corp., 181 USPQ 182 (TTAB 1973).
FN48. We recognize that the Board, in the context of an ex parte appeal, stated in In re Deere & Co., 7 U.S.P.Q.2d 1401, 1403 (TTAB 1988), that the opinions in In re DC Comics, Inc., supra, and In re Penthouse Int'l Ltd., 565 F.2d 679, 195 USPQ 698 (CCPA 1977), "leave little doubt that aesthetic functionality, per se, (sometimes referred to as ornamentation functionality) is a doctrine which has been rejected by the Court of Customs and Patent Appeals (now the Court of Appeals for the Federal Circuit)" (footnotes omitted) and, hence, does not constitute a proper ground for refusal of registration. Applicant, although citing First Brands Corp. v. Fred Meyer Inc., 809 F.2d 1378, 1 U.S.P.Q.2d 1779, 1781 (9th Cir.1987) at n. 3 and American Greetings Corp. v. Dan-Dee Imports Inc., 807 F.2d 1136, 1 U.S.P.Q.2d 1001, 1005 (3d Cir.1986), for the proposition that "[t]he 'aesthetic functionality' concept ... has been rejected by a number of courts," has not discussed in its briefs the issue of whether aesthetic functionality is a proper ground for relief in inter partes proceedings and opposers likewise have not done so. Nevertheless, rather than requiring further briefs from the parties directed to such issue, we note that even if aesthetic functionality is a valid basis for opposing registration of a mark, the material facts not genuinely in dispute require a finding for applicant rather than opposers on the claim of aesthetic functionality.