Does ACC With California, Stanford & SMU Need To Change Its Trademark?

If this conference needs to change its trademark, it is not alone.

With the latest shake-up in college sports bringing two California teams, and one from Texas, into the Atlantic Coast Conference (“ACC”), the conference name is ridiculous. Everyone sees that. It goes even further than that. In fact, a brand new entity with the mark ACC would likely struggle to be registered in the U.S. Patent and Trademark Office based on this membership of schools. At the moment, it does not seem anyone is going to reasonably (I presume) try to challenge the ACC’s mark as being a “misdescriptive” one. It has a long history and people know who are there. Any new college conference (football gets much of the attention from these realignments, though other sports and academics get involved) called the “Atlantic Coast Conference” would seem to raise the expectation that this was comprised of teams generally near the Atlantic coast, in coastal states like the Carolinas, Florida, and Massachusetts. When you include California and Texas, you might have a problem.

Terms that are geographically misdescriptive are very difficult, and sometimes impossible, to protect under U.S. law. Unless people really did not think that Atlantic Coast Conference meant “Atlantic coast,” the conference could be shut out of formal trademark registration. Some specific formalities in the trademark rules, even if the organization showed that people fully understood who the “Atlantic Coast Conference” was, prohibit terms that misdescribe geography. Other terms which describe goods or services can be registered under some exception or because they have been in use so long that people know exactly who they are, descriptiveness be damned. When an organization has been in existence for so long, it can often overcome obstacles to registration. Where the problem is considered misleading geographic associations, some technicalities in the law flatly prevent registration.

For the ACC, it has a long history, and it would be difficult if not impossible for any after-the-fact challenge to their registered rights. (By the way, I am a long-time ACC season ticket holder, but that’s neither here nor there.) But if a business owner was to adopt and use a mark like this from scratch, and try to register it under similar circumstances, they would face some struggles. (I am going to ignore other technicalities, such as the fact that a couple of the existing conference members already are not in coastal states, namely Louisville and Pittsburgh.) There is a lot about trademark law which is very intuitive. Then, there are things like this.

Geography is not the only reason colleges need to start re-naming their athletic conferences. The marks use geographic terms from coast to coast, sacrificing distinctiveness. Tradition is important, true. And these leagues are so old and highly publicized that it is hard to argue that simple names really matter (yes, the name National Football League is not a big eye-opener, and they seem to do just fine). The ACC is not alone in this respect. There is the legendary Big 10 conference, home to 14 schools. They may not have the geographic problem, but it has been a long time since the “Big 10” was a big 10. Should they update the “Big 14?” Do fans know the Big 10 now identifies a league, and the number of members is irrelevant? What if someone were to make a legal argument that some competing product comes from a place with ten members, and would be distinguished from the Big 10 because everyone knows that the Big 10 is a 14-team league? Would that avoid conflict?

The conference has a logo, which is “B1G,” where they depict the “1G” in different letters to give the general impression of the number “10.” At least it is a trademark. Is it the word “Big?” Is it the “1G?” Is it the “10?” B1G has been used for a dozen years now, and right from the start, the conference cleverly told the Trademark Office that it had a detailed description of this mark, which is composed of the letter “B” and the number “1,” followed by a stylized letter “G,” “such that when read together, the letters and number spell ‘BIG’ and the stylized number ‘1’ and letter ‘G’ spell the number ‘10’” (not even an institution of higher education can “spell” a number, but who am I to quibble with academics). The conference has stuck with this description of the logo over the years for athletics, as well as a range of university activities including scientific endeavors; apparently there were no grammar competitions.

The Southeastern Conference had itself a nice little logo back in the 1930s, which it finally got around to registering 44 years later. The registration has since expired, but this original had the words “Southeastern Conference” surrounding a wheel-like design, with the letters “SEC” in the middle, and the names of each of the member schools at that time (Alabama, Auburn, Florida, Georgia, Kentucky, LSU, Mississippi, Mississippi, State, Tennessee, and Vanderbilt) as spokes of the wheel.

Now, the SEC logo is registered with the familiar three letters, surrounded by a circle format, which they adopted back in 1981. If every conference could copy the SEC, things would make much more sense. The Southeast Conference consists of all teams which are in the south or east. Not necessarily in the southeast, but let us not quibble. There is no misdescriptive number of teams. (Or is that why they have the biggest TV contract and greatest on-field success?)

The Pacific 10, or “Pac 10,” had a number of venerable trademark registrations and a logo. Alas, they had to abandon those once (stop me if this sounds familiar) they were no longer consisting of ten schools. Those Pac 10 trademarks went all the way back to 1928, by which time they had already grown to ten members. But the “Pac 10” trademark was effectively dead in 2010 when the conference became the “Pac 12,” which it has remained ever since. At least the Pac 10 had its own mark which it has been able to perpetuate, even as the name of the conference changed to PAC 12. The mark is “Conference Of Champions,” which it has been using since 1979. This permitted the conference to keep featuring this trademark, even as the number of teams and league name changed over that time. A trademark which survives changes in the business – it is a good concept, and advisable to every business. Protect a mark which works today, but which will also be durable as changes happen. As things look right now, with California and Stanford gone, the Pac 12 might be too. Who will own this trademark? Or will it be abandoned, hence destined to be picked up by entrepreneurs down the road who can try to eke out some goodwill from the past century.

So, will the ACC change its name? Sometimes there is a telltale sign when in anticipation of using a new mark, an entity files an application to register its mark in the Trademark Office. Nothing like that is on file as of today. The ACC did start using the mark “Bring Your A Game” around 2014, and has a registration for that mark still, but it seems to have been a specialized use. Will they change it to APCC (Atlantic/Pacific Coast Conference)? Or just the Coast Conference? Will they migrate to some entirely new name? History tells us none of that is likely to happen. Although if they want to get creative, remember that the “Pac 12 Conference Of Champions” may be up for bid. If California can be the Atlantic, then Boston and Miami might just as well be in the Pacific.

No one wants to change a working trademark, especially one with the long history of the ACC. But on the other hand, names have changed, even if the changes were small. The Big10. The Pac 10. The former Big 8, which since it merged with another conference became the Big 12 (naturally, comprised of at least 14 teams). It does create issues with which a trademark lawyer can work. Like, can you really say some knockoff of Big 12 stuff would be immediately confusing, if there is also the “Big 10” with 12 teams, and the “Big 12” with 14? (Also, institutions of higher learning should be able to count.)

Almost always, using famous marks as a guide can inspire when they are good, but when they exist on the back of longevity and perhaps brute force, perhaps it is better not to look to them for inspiration for your own business.

All of those above conferences are in a grouping of college football powerhouses called the “Power Five.” That leaves five other football conferences in the NCAA on the inspirationally named Football Bowl Subdivision. (Really, is anyone else seeing a trend here?) The FBS schools not in the Power Five are called the “Other Five.” – Nope. Just kidding. It is the “Group Of Five,” comprised of the American Athletic Conference, the Mountain West Conference, the Mid-American Conference, and the Sun Belt Conference – the last of which sadly probably wins the award for the most clever and strongest brand-name among these major college football conferences.

The other divisions outside the FBS are largely more of the same, with names like Big South, Great West, the in-between and sort-of geographic Big Sky Conference, and the more creative Ivy League, Patriot League, and Pioneer League. Ivy League is full of nuance for a variety of issues, and is often defined as the premier grouping of academic institutions in the country, and maybe anywhere. It turns out they may also be in the lead for distinctive conference names.

How much do fans – or universities – care about the conference names? Maybe we will find out.

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