If you are traveling in Europe this summer, you are likely to see a lot of young people wearing collegiate styled Franklin & Marshall shirts and clothing… and you might wonder how the small Franklin & Marshall College in Pennsylvania has generated such a following abroad.
THE ANSWER: it’s because of a creative trademark deal. After a pair of Italian designers were inspired by a Franklin & Marshall College sweatshirt… they created and launched an Italian brand based on the “American varsity style” and started selling a clothing line using the Franklin & Marshall name. Since Franklin & Marshall is a registered trademark in the US, the College could potentially have a trademark infringement claim against the brand including a challenge to the brand’s domain name (www.franklinandmarshall.com) which infringes on the College’s trademarks. (Franklin & Marshall College has three USPTO trademark registrations that incorporate the college’s name “Franklin & Marshall” – USPTO Registration Numbers: 2739509, 3536380, 2812109)
THE NEGOTIATION: the College and the Italian brand decided to negotiate a mutually beneficial deal. The Italian brand is able to continue selling varsity style gear abroad using the Franklin & Marshall trademarks and in return, it has 1) reportedly paid a licensing fee for use of the college’s trademarks; 2) includes information about the college on clothing hang tags; 3) made a donation to the college’s scholarship fund; and 4) allows the college to review clothing designs and ad campaigns.
With over 200 stores in Italy, the Italian, Franklin & Marshall brand can be a stylish way for the small Franklin & Marshall College in Pennsylvania to get its name out there! (an Italian brand is just about the hippest form of marketing available!) The clothes look great… see for yourself at http://www.franklinandmarshall.com/en/Collection/Man/Jackets.
(NOTE: Domain names that infringe a USPTO registered trademark can be challenged with a WIPO Domain Name Dispute. See, http://www.wipo.int/amc/en/domains/. A WIPO Domain Name Dispute is a powerful tool available to USPTO trademark owners that enables them to challenge domain names that are based anywhere in the world).
See also: A great article by Paul Lukas at: http://espn.go.com/blog/playbook/fandom/post/_/id/2608/the-two-identities-of-franklin-marshall, http://www.fandm.edu/, www.uspto.gov, frequently asked questions about Internet Domains and WIPO domain name disputes: http://www.wipo.int/amc/en/center/faq/domains.html, @iplegalfreebies and www.kasterlegal.com.
BY: Vanessa Kaster, Esq., LL.M.