Tomorrow Starts Here. It’s a powerful statement about the influence made possible by the educational and research institution, East Carolina University. (Disclosure: I am on the faculty at ECU.)
Cisco Systems recently launched an advertising campaign using the slogan, Tomorrow Starts Here. You can view it here.
Sense a problem?
ECU has since filed a lawsuit against Cisco Systems for the unauthorized use of its federally registered trademark. Trademark law covers the use of marks, which could include words, phrases, symbols, and slogans, to identify the source of goods and services. In other words, trademark law is designed to protect registered brand marks such as the slogan, Tomorrow Starts Here. When another brand infringes upon a brand’s registered mark, there is the potential for consumer confusion. The Lanham Act gives registered mark holders the right to sue the infringing parties in order to protect its mark and to prevent the dilution of its brand.
Sounds straightforward enough. The complicated issue though is judging how likely it is that consumers would be confused by competing use of the same mark. Experts may assess likelihood of confusion using consumer surveys designed to gauge confusion based on the usage of the mark in question. They might also assess the situation using factors applied in two of the most cited cases on trademark infringement – the Polaroid Factors (Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820 (1961)) or Dupont Factors (DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973)). Based upon these cases, the courts identified several factors which can be applied to assessing the likelihood of confusion.
In this blog post, I will offer my own opinions regarding the ECU vs Cisco case using many of these factors.
In Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820 (1961), several factors were used to determine likelihood of confusion. Therefore, my analysis included examinations on the following: 1) strength of the mark, 2) degree of similarity between the two marks, 3) proximity of the products, 4) bridging the gap, 5) actual confusion, 6) good faith indicators, 7) quality of the defendant’s product relative to the plaintiff’s, and 8) the sophistication of buyers. My analysis and opinion are in parenthesis following the listing of the respective factor.
- Strength of Mark. Gauging the strength of a trademark requires an examination of the inherent distinctiveness and the degree to which the mark is distinctive in the marketplace. Mark strength may include consideration of the type of mark, the mark’s ability to identify the goods sold under the mark as coming from a particular source, commercial strength, third party usage, and commonality (Cusson, 1995). East Carolina University has been using its registered mark for more than a decade across much of its branded content. Thus the mark is affiliated with the brand source and ECU has invested in associating the mark with its brand through many forms of advertising and promotion. Further, the mark was registered after evaluation by the US PTO suggesting that its investigators deemed the mark to be distinctive.
- The degree of similarity between the two marks as to appearance, sound, connotation, and commercial impressions. In my opinion, both organizations are using an identical mark. Further, the marks are used with identical connotations – that the future begins with what the respective organization is doing, researching, and offering to its customers and community. In my opinion, this test criterion suggests that there is support for the claim of likelihood of confusion.
- Proximity of the products. There is the potential for confusion based on the nature of the organization’s market. Both organizations support research in the technology field and have a history of bringing such products to market. Cisco is a corporate venture while East Carolina University is a state-funded institution of higher education; yet both organizations produce innovations which come to market. In my opinion, there is a similarity in the types of products offered by the two institutions.
- Bridging the gap. The court will also assess whether it is likely that the offending company will “bridge the gap” to compete against the mark’s owner in other markets in which it competes.
- Actual confusion. To assess actual confusion, we might conduct a survey to assess likelihood of confusion or assess anecdotal evidence that prospective and actual consumers have been confused with respective to the mark. At this time I am not aware of any actual confusion.
- Good faith indicators. The court will seek to assess whether the defendant acted in bad faith, to leverage the value of the plaintiff’s registered mark. In my opinion, this is possible given that it is quite simple to search protected marks in the USPTO system or even to search using a search engine to identify possible uses of the slogan in question.
- The sophistication of buyers. Confusion is thought to be more likely when the buyers of the products in question lack sophistication. In this case, because the two institutions work in the realm of cutting-edge technologies, it is likely that the average viewer of the promotional materials in question would lack adequate sophistication to differentiate between the marks. In my opinion, this supports the plaintiff’s charge of likelihood of confusion.
It is my opinion, after reviewing the Polaroid factors that there is support for the plaintiff’s claim of likelihood of confusion. The marks are identical and used in the same connotation. The strength of the mark is high given the length of time it has been used, the extensiveness of use, and the amount of promotional investment made by East Carolina University to associate the mark with its brand. The two organizations’ areas of competition overlap in the fields of technology and technology research. Both organizations promote themselves to business partners, the public, and general consumers, who are likely to be confused due to their lack of sophistication in the technological arena.
Outside of working for the plaintiff as a faculty member, I am not involved in this case. Further, I haven’t conducted a thorough analysis. But I found it interesting to apply my knowledge of trademark infringement as it relates to consumer likelihood of confusion. And now we’ll see what happens. I’ll post updates here.