Little insight is available on the long-term effects of changing a company trademark. However, the recent dispute between Kent State University and Urban Outfitters over the second-hand vintage Kent State University sweatshirt sold by Urban Outfitters provides tremendous insight on this issue.
In September 2014, Urban Outfitters recycled, re-styled, and re-sold an old vintage Kent State University sweatshirt using a process that turned the sweatshirt a faded red with dark red splotches that resembled blood-splatters and holes that resembled gun bullet holes. Why does this matter? Urban Outfitters maintains that the item was part of its “sun-faded vintage collection” and that the holes and red colorations are from “natural wear and fray.”
This controversy matters because on May 4, 1970, the National Guard opened fire upon the Kent State student body during protests of the Vietnam War. Four students were killed, including at least one student, Sandy Schreuer, who was merely walking to class to take a midterm. Nine others were injured. The incident created chaos and a state of emergency was declared at the University and nearby towns. Today, the incident still remains an integral, sensitive, and extremely important part of the University. The event should not be taken lightly as it is a direct example of an invasion upon fundamental Constitutional rights. The University, its alumni, its current students, and the general public were appalled and outraged when the Urban Outfitters’ Kent State University sweatshirt hit the market.
Among the media hype and public disgust, a looming question remained: how could Urban Outfitters legally do this? It is clear that Kent State University did not authorize Urban Outfitters to sell the sweatshirt. But yet, nothing indicated Urban Outfitters did anything illegal. A few factors likely make Urban Outfitters’ profitable use of the sweatshirt legal. First, it is likely that the University’s seal is in the public domain and therefore, not protected by copyright law. Second, even if the seal is protected by copyright law, Urban Outfitters merely re-sold the sweatshirt and did not design and manufacture a new sweatshirt. Thus, Urban Outfitters did nothing more than what consumers do each day: re-sell an item that was lawfully purchased. Intellectual property law does not prevent the re-sale of lawfully purchased items, even if profitable.
Finally, trademark law does not prevent Urban Outfitters from re-selling the sweatshirt with Kent State’s seal unless consumers are confused into thinking that Kent State authorized Urban Outfitters to use its seal. Clearly, the publicity stunt surrounding this entire ordeal demonstrates that the public is not confused. Additionally, trademark law requires that an entity either use the mark or lose it. Registered or not, if a mark is not being used in commerce or in marketing, a business loses its exclusive right to use the mark and prevent others from using it.
A careful comparison of the Urban Outfitters’ sweatshirt and the Kent State University seal presently used reveals that the University seal on the sweatshirt is not the University’s seal today. Kent State University’s spokesman, Eric Mansfield, reported that Urban Outfitters’ sweatshirt displays the Ohio state seal, a mark that Kent State University ceased using in its marketing materials sometime after 1964. Under trademark law, Kent State lost its ability to exclude others from using the former mark that is on the Urban Outfitters’ sweatshirt when Kent State stopped using the mark in commerce. Other than the risk of causing trademark dilution of the University’s name only, essentially Kent State forfeited its ability to prevent another entity from using that seal for profit when it ceased using the mark for itself. Consequently, when a business or entity stops using a particular trademark in commerce, it leaves that mark free for others to use. Like the Kent State seal previously used, if the name of the business or entity is a part of the trademark, it is still likely subject to trademark dilution claims for the use of the business name; however, overcoming the burden of proof on a trademark dilution claim is hardly an easy task.
It is important to note that state law often provides more protections than Federal laws over trade or service marks. However, state law is not sufficient in many matters. The Urban Outfitters’ Kent State sweatshirt depicts a glimpse into the murky waters that may need to be navigated when a company either voluntarily or involuntarily changes its trademark, even decades later.
Lorene Piatt, Graduate of Kent State University