Patents `mark' University image
By NOREEN GILLESPIE
Saint Mary's Editor
Notre Dame's attempt to preserve its image sends a message to potential offenders: Hands off.
Regulating legal use of its logos doesn't just make the University look good; it also protects its exclusive rights to Notre Dame images.
The University has about two dozen trademark rights on symbols, including the interlocking `ND,' the leprechaun mascot, the University seal.
Protect-ing trademarks is a responsibility that must be enforced vigorously, said Bill Hoye, assistant vice president for the General Counsel's office.
"If the trademarks are not vigorously enforced, they can slip into the public domain and we can lose our rights to them," Hoye said.
Notre Dame trademarks are most widely used on apparel, which pushes the University to enforce trademark rights in national and international settings.
"It's a global business, especially in apparel," Hoye said. "We are taking giant steps to register these trademarks around the world."
Walt Disney and Coca-Cola are famous for enforcing their trademark rights, and Notre Dame doesn't want to be different, Hoye said.
Notre Dame investigates any suspicious use of trademarked images. The University receives direct reports to the General Counsel and reports from other universities and organizations looking out for their own rights.
While the University will not disclose the revenue generated from trademarks, said Carol Kaesebier, vice president of the General Counsel's office.
Kaesebier said money earned from trademarks is put toward financial aid.
One reason Notre Dame enforces trademarks is to prevent outside companies from making a profit with an unauthorized Notre Dame image.
"There is value for pirates who infringe the marks," Hoye said. "Also, when you have companies like adidas and Champion who pay royalties to use the trademarks and hear that there are other companies doing the same thing without paying that royalty, they are upset."
Another motivation is keeping the University's image preserved as one that is respectable and portrayed in positive terms.
A case surfaced last winter involving a young woman who included the Notre Dame logo among nude pictures on her Web site.
"Lucki," the name used by the woman who claimed to be a Notre Dame student, was issued a "cease and desist" letter after the General Counsel learned of the Web site. The counsel stated last December that the letter "informs them that we know they're using our trademark and [orders] them to remove the trademark."
The logo was promptly removed from the site.
"The University doesn't want anything embarrassing or disgraceful to the University," Kaesebier said.
After the letter is issued, the General Counsel decides if legal action will ensue based on the violator's response and nature of the infringement.
"Federal and state law gives us the right to file suit and collect triple damages including our attorney fees, and the cost to incur the case," Hoye said.
Stopping trademark infringement is not, however, done to make a financial profit, General Counsel officials said.
"Our goal is to get them to stop, not collect money from them," Kaesebier said.
Stamp of Approval
Recognizing Notre Dame apparel isn't a difficult task, thanks to a unique symbol that clearly distinguishes legal apparel from the rest.
A unique hang tag featuring the Golden Dome which certifies all legal Notre Dame apparel serves as the stamp of approval for manufacturers who have permission to use the logo.
Not many potential manufacturers and outside groups easily attain permission.
"We only grant a limited number of licenses," Kaesebier said. Part of that may be due to the large numbers of applications that the trademark and licensing committee receives.
"We grant a very small number, maybe one or two of those requests," Kaesebier said. "[The trademarks and licensing committee] meet almost monthly."
Manufacturers and outside groups must submit an application to the licensing department detailing what the product is, where it is manufactured, expected product revenues, marketing techniques and stores in which it will be sold.
The application is then returned with samples of other products the company has manufactured, before it is presented to the trademark and licensing committee.
The committee then evaluates the application and determines if the use is legitimate, Kaesebier said.
"The additional thing we'll ask as we go forward is where [the product] is manufactured," she said.
Details concerning manufacturing is a crucial part of determining legitimacy, because Notre Dame has committed to becoming a leader in stopping sweatshop manufacturing of University apparel.
While only two requests are granted per month, it is far easier for students to attain permission than outside vendors, Kaesebier said.
Although student permission is easier to attain, student violations also lead the on-campus reports of infringement.
Because a large portion of student infringement violations are reported during football season, the University obtains a temporary restraining order for the season. It gives University Security the authority to seize unlicensed products sold on football weekends.
The seized products are sent to a shredding machine on campus and turned into rags.
The practice is also frequent among visitors attempting to make a personal profit off the trademarks. Student offenders are reported to student activities and residence life.
"When we see them being sold, we investigate," Kaesebier said. University students are allowed to sell individual products in dorms, but elsewhere it is considered illegal.
Student violations are handled on a case-to-case basis, said Joe Cassidy, director of student activities.
"When a group is reported, the first thing we look at is if it was a mistake or intentional," he said. "We try not to penalize a group based on the poor decision of one or two people."
Failure to protect Notre Dame's rights could mean losing them.
Hoye cited a University of Wisconsin case where the institution failed to protect its logos and lost exclusive rights to them.
Hoye added that Notre Dame's main goal is to protect the University's rights to its image.
"Federal laws and state laws are set up to give the trademark holder the legal rights to protect these marks," he said. "Our primary reason for protecting trademarks is so that we do not lose those rights."
"[We hold and prosecute the trademarks] to protect our image, our rights to our trademarks," she said. "If you don't protect them, you can lose your rights."
All News Stories for Friday, September 24, 1999