Chicago State: Trademark Infringement Claim

Chicago State University (“CSU”) has threatened legal action against a blog run by CSU faculty members if it is not disabled. CSU alleges the blog uses trademarks and trade names without CSU authorization. Since then, while the blog is still active, it has changed its name and image.

Active since 2009, the blog has posted information criticizing CSU’s administration, including their policies and hiring practices. This November, CSU’s Vice President and General Counsel, Patrick Cage, alleged that in addition to its trade name violations, the site also “violates the University’s values and policies requiring civility and professionalism of all University faculty members.” Approximately eight faculty members contribute to the site and use their own names or pseudonyms. Additionally, prior to its recent alteration, the blog used a picture of an on-campus “Chicago State University” sign and CSU hedge sculpture. The blog is now titled “Crony State University” and has replaced the campus image.

CSU has stressed that the legal notice has nothing to do with any ill feelings between the faculty and administrators, but rather because of the unauthorized trademark usage. However, this argument has zero legal basis as trademarks cover uses in commerce, not criticism, which is what the faculty-run blog is entirely run on. Moreover, given that the alleged infringing names and photos have been removed, it seems as though CSU’s concerns should be settled.

However, this isn’t the first time CSU has attempted to inhibit criticism from within. In fact, last year, CSU officials ordered that only authorized university representatives could release University information to the media, and that everyone else required prior approval. Additionally in 2010, a former attorney for CSU filed suit alleging that the school’s president retaliated against him for refusing to withhold documents from a FOIA response. Lastly, in 2011 a judge held that the school violated the First Amendment rights of its own campus newspaper when administrators fought it for publishing stories that shed negative light on the administration.

Trademark Law Requires Commercial Use — Not Just Any Use

CSU’s trademark argument reveals a fundamental misunderstanding of what trademark law actually protects. Under the Lanham Act, trademark infringement requires use of a mark “in commerce” in connection with the sale or advertising of goods or services in a way likely to cause consumer confusion about the source or sponsorship of those goods or services. 15 U.S.C. § 1125(a). A faculty criticism blog that uses a university’s name in the course of commenting on that university’s administration does not satisfy the commercial use requirement — it is plainly non-commercial speech.

Courts have consistently held that non-commercial critical use of a trademark is not infringement. In Bosley Medical Institute, Inc. v. Kremer, 403 F.3d 672 (9th Cir. 2005), the Ninth Circuit held that a consumer advocacy website that used a company’s trademark in a domain name without selling competing goods or services did not constitute trademark infringement because the use was not commercial. The same principle applies here: faculty members criticizing university administration are not competing with the university in any commercial sense.

Trademark Bullying and the First Amendment

The CSU situation is an example of what trademark lawyers call “trademark bullying” — using trademark cease-and-desist letters not to protect legitimate commercial interests but to silence speech that the trademark owner dislikes. The First Amendment provides significant protection for critical speech, and courts have recognized that trademark law cannot be used as a weapon to suppress protected commentary.

Trademark bullying is a documented problem in the legal landscape. The USPTO has published reports on abusive trademark enforcement, and the International Trademark Association has issued guidance discouraging lawyers from sending unsupported cease-and-desist demands. While the threat of litigation can be coercive even when the underlying legal claim is weak, recipients of baseless trademark demands have options — including filing a declaratory judgment action to establish that they have not infringed and, in some circuits, pursuing claims for unfair competition or tortious interference arising from the bad-faith demand.

Nominative Fair Use

Even where a critic uses another party’s trademark in a way that might technically satisfy the commercial use requirement — for example, by using a brand name in a sponsored search ad or in connection with a review product — the doctrine of nominative fair use may provide a defense. Under New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992), use of a trademark to refer to the trademark owner’s own goods or services is permitted where: (1) the product or service in question is not readily identifiable without using the mark; (2) only so much of the mark is used as is reasonably necessary to identify it; and (3) the user does nothing to suggest sponsorship or endorsement by the trademark owner.

If your First Amendment rights have been violated by a trademark bully, contact the trademark lawyers at Revision Legal at 855-473-8474 or through our online contact form.

When to Send a Trademark Cease-and-Desist Letter

The CSU case illustrates the dangers of sending cease-and-desist letters based on unsupported trademark claims. A poorly founded demand can backfire: the recipient may file a declaratory judgment action seeking a court ruling that no infringement has occurred, forcing the claimant to litigate a case they cannot win. In Ninth Circuit jurisdictions, sending an objectively baseless trademark demand can also give rise to a counterclaim under the Noerr-Pennington doctrine’s “sham exception,” potentially exposing the claimant to liability.

Before sending any trademark cease-and-desist letter, the claimant should ensure: (1) they own valid trademark rights; (2) the target’s use is actually in commerce in connection with goods or services; (3) the target’s use creates a likelihood of confusion; and (4) the demand is proportionate to the actual harm and the strength of the claim. A well-crafted cease-and-desist letter that accurately states the legal basis for the claim and clearly articulates the requested remedy is far more likely to achieve the desired result than an overbroad, legally unsupported demand.

If your First Amendment rights have been violated by a trademark bully, or if you need assistance sending or responding to a trademark cease-and-desist letter, contact the trademark lawyers at Revision Legal at 855-473-8474 or through our online contact form.

Why Work with Revision Legal?

Revision Legal is a national intellectual property and internet law firm that represents clients across the United States in trademark, copyright, trade secret, and internet law matters. We are a firm of specialists — not general practitioners who handle IP work as one component of a broad practice, but attorneys whose entire professional focus is on the intersection of technology, creativity, and commerce.

Our attorneys have handled cases at every level of the federal court system, including the United States Court of Appeals for the Federal Circuit, the Sixth Circuit, the Ninth Circuit, and before the Trademark Trial and Appeal Board. We manage trademark portfolios for hundreds of clients, ranging from individual entrepreneurs registering their first mark to publicly traded companies maintaining global trademark portfolios across dozens of countries.

We believe that access to expert legal counsel should not depend on the size of your organization. Revision Legal’s flat-fee service model for routine IP matters — trademark registration, copyright registration, DMCA notices, and standard licensing agreements — allows small businesses, startups, and individual creators to access the same quality of legal representation that larger companies receive, at a price that is predictable and fair. For complex litigation and contested proceedings, we work efficiently to achieve the best possible outcome for our clients while managing costs responsibly.

Whatever your intellectual property or internet law need — whether you are protecting a new brand, enforcing your rights against an infringer, defending against a legal demand, or navigating a complex licensing transaction — Revision Legal has the expertise to help. Contact us today at 855-473-8474 or through our online contact form to discuss your matter.