By: Mark R. Malek

Just in case you have somehow forgotten, I am a die hard NC State Wolfpack fan.  As they say, I bleed Wolfpack Red.  When I was going through the dozen of so email updates that I get every day of intellectual property news (yes, I am that boring) my attention was immediately grabbed by an article in the News and Observer (a paper out of Raleigh) indicating that NC State was asserting ownership of the Wolfpack Mascot… that’s right – Mr. Wuf was in peril and NC State was stepping up to defend him.

Apparently, NC State had about enough of Loyola calling their team the Wolfpack.  Attorneys for NC State sent a letter to Loyola informing them that their use of the Wolfpack trademark violated the trademark rights of NC State.  The article did indicate, however, that NC State proposed options to Loyola that would allow Loyola to use “Wolfpack” in connection with Loyola, but not standing alone.  The first thing that came to my mind, however, was the University of Nevada trademark.  Apparently, however, that dispute was resolved already.  Nevada had already entered into an agreement with Nevada whereby Nevada agreed that it would not use Red and White to show its wolf, and that he wolf would not don a tophat.  <insert several jokes here.>

To figure out the basis of NC State’s claim, I conducted a search using the USPTO website.  This is a hint to all trademark owners, or potential trademark owners out there.  A great place to do some free trademark searching to see if protection for you trademark may be available, or to see what potential competitors may be up to, is the USPTO website.  Anyway, I found two registered trademarks owned by NC State (depicted below, but you have to click on them to really see them).  One is directed to apparel and promoting sports events, and another is directed to merchandise ranging from key chains to decals (many of which I already own but if someone was thinking about getting me a gift for no particular reason, I can always use more Wolfpack gear – as can my kids).  Clearly, NC State uses the Wolfpck trademark in connection with promoting their sports program, as well as the merchandise that goes along with it.

I was absolutely shocked, however, to see the registered trademark below for “Wolfpack” as used in connection with “Educational services in a corporate setting, namely, conducting training, seminars and workshops for others in the field of concurrent engineering to help companies implement concurrent engineering in their manufacturing operations as it relates to the development and improvement of manufactured goods; and distribution of course materials in connection therewith.”  How can this be?  How does someone besides NC State own a trademark for “Wolfpack” for educational services in the field of concurrent engineering?  When I think of the three schools in the Triangle (Raleigh, Durham, Chapel Hill), there are the other two inferior schools and the Engineering School at NC State!  I guess I was a little surprised to see the NC State attorneys letting that one slide.  This is a product, however, whether or not the trademark owner uses the trademark on the particular goods and services.  For example, in this particular case, NC State must not have been using “Wolfpack” for its educational services.  It’s not as though people run around calling it “Wolfpack Engineering.”

I would like to think, however, that NC State could have a decent trademark dilution claim based on the use of the “Wolfpack” name by someone other than them in connection with educational services.  First and foremost, NC State is an institution of higher learning.  Of course, we all rally behind the sports teams, and the sports teams probably bring in a large chunk of the revenue at the school.  Trademark dilution is a cause of action that is reserved, generally, for “famous” marks.  It is a way for famous trademark owners to stop others from using their trademarks in a manner that would dilute the value of the registered trademark.

I suspect that Loyola will comply with NC State’s demands and enter into an agreement similar to that of Nevada.

On a side note, upon reading finding out about this issue, I immediately tweeted it – you guessed it, I am a tweetaholic.  Twitter has been a great tool for me to keep up to date on intellectual property issues, and to converse with other intellectual property professionals around the world.  Shortly after tweeting my article, I was contacted by an AP reporter writing about the NC State/Loyola trademark dispute.  I conducted a quick interview with Tom Breen and he later posted an article in which I was quoted.  I’ll post an article soon outlining my views on social networking and how you can benefit from it.