Earlier this month, East Carolina University (ECU) filed a lawsuit against Cisco Systems, Inc. claiming Cisco unlawfully and willfully used ECU’s “TOMORROW STARTS HERE” trademark as the focal point of a new multimillion dollar advertising campaign. In 2011, ECU successfully obtained a federal trademark registration for the slogan “TOMORROW STARTS HERE” in international class 41 with the following description: “[e]ducation services in the nature of courses at the university level”. ECU claims to have continually used “TOMORROW STARTS HERE” since March 31, 2002. In a complaint filed in the U.S. District Court for the Eastern District of North Carolina, ECU claims that, in addition to its federal trademark registration, it has acquired “extensive common law trademark rights” to the slogan “TOMORROW STARTS HERE” in association with ECU’s “College of Technology and Computer Science, research software development, intellectual property and licensing, in addition to commercialization of technology and software long prior to [Cisco’s] adoption of the identical mark for overlapping goods and services.”
ECU claims that Cisco implemented an advertising campaign on December 10, 2012 at an estimated cost of $100 million featuring the slogan “TOMORROW STARTS HERE”. In conjunction with the campaign, Cisco filed three applications to register “TOMORROW STARTS HERE” with the U.S. Patent & Trademark Office. ECU notes that one of the trademark applications utilizes the following description of goods: “downloadable electronic instructional materials, namely, manuals, guides, test materials, and magazines in the field of technology.” The complaint lists five counts: trademark infringement (15 U.S.C. § 1114), false designation of origin (15 U.S.C. § 1125(a), common law trademark infringement, common law unfair competition, and deceptive and unfair trade practices under state law (N.C. Gen. Stat. § 75-1.1 et seq.). Among other things, ECU is seeking a preliminary and permanent injunction against Cisco.
ECU’s complaint draws attention to only a selected portion of just one of the descriptions set forth in Cisco’s applications to register “TOMORROW STARTS HERE”. Presumably, ECU selected this portion to demonstrate that there is a likelihood of confusion insofar as Cisco’s use of “TOMORROW STARTS HERE” is similar to ECU’s use, namely, education and technology. ECU’s case is, however, not clear cut. ECU will have to prove likelihood of confusion to prevail at a trial. Likelihood of confusion is a highly factual test dependent upon the unique circumstances in a given case. The Fourth Circuit (where North Carolina is located) recognizes seven general factors: (i) “the strength or distinctiveness of the mark”; (ii) “the similarity of the two marks”; (iii) “the similarity of the goods/services the marks identify”; (iv) “the similarity of the facilities the two parties use in their businesses”; (v) “the similarity of the advertising used by the two parties”; (vi) “the defendant’s intent”; and (vii) “actual confusion”. Pizzeria Uno Corp. v. Temple, 747 F.2d 1522, 1527 (4th Cir.1984). No one single factor is dispositive.
The case is East Carolina University v. Cisco Systems, Inc., 13-cv-03 (E.D. N.C.). We will monitor the case and update the Grimes blog as it progresses. We previously posted a particularly informative and expansive post about
trademark protection for advertising slogans last year framed around the famous “I’m going to Disney World” slogan that has been uttered by various MVPs of the NFL’s Super Bowl for decades.
