Can I use the word “UNIVERSITY” as part of my trademark? And the answer is always, let’s look at the context. So let’s say that you wanted to manufacture a new line of cell phones and you wanted to call that “University.” Now, UNIVERSITY usually is attached to educational services, but in this case, we’re going to attach it to cell phones.
So I want to manufacture cell phones and I want to use the brand name UNIVERSITY on my cell phones. Is that allowed? Yes, because “university” doesn’t really have anything to do with cell phones. It doesn’t describe cell phones. There’s nothing that UNIVERSITY has to do with manufacturing electronic goods, including cell phones. So that’s an example of an arbitrary mark where we’ve just decided to use an English word or another language word — it doesn’t matter — but we’ve decided to use a word as a certain brand for our product that has nothing to do with our product.
Another example of this that I did a video on earlier is ORANGE for amplifiers, for guitar amplifiers.
And so they used the word ORANGE. Orange has absolutely nothing to do with guitar amplifiers. It’s just an arbitrary word that they chose for a brand. Fine. But what if your goods and services that you want to associate the trademark with are educational services and you want to use the word UNIVERSITY? Well, now we look at that a little bit differently because UNIVERSITY can be used to describe educational services, right? So let’s look at an example of this now.
Don’t come at me because I’m using this as an example, OK? I looked for Cardone University. Apparently he doesn’t have that registered as a trademark. But Donald Trump used to have trademarks for TRUMP UNIVERSITY. Now, you can see here that they are dead. They’re dead because they weren’t renewed. You have to renew your trademarks between year five and year six, and if you don’t do that, then your mark will go abandoned for non-renewal. But let’s take a look at these.
Now we’re going to look up Trump University and see what we get. You can see that it was canceled for non-renewal. We expect that when you don’t renew. But let’s look at the goods and let’s look at how the registration worked out.
You’ll notice that there was a registration for prerecorded DVDs, CDs and audiotapes featuring study course material in the field of real estate and entrepreneurship. So he’s he’s making educational courses and videos and DVDs and using the TRUMP UNIVERSITY trademark on those. There were also printed materials, namely books for home study courses in the field of real estate and entrepreneurship. See Reg. 3321564 TRUMP UNIVERSITY in classes 009 and 016 for “pre-recorded audio and visual material re real estate and entrepreneurship; printed materials for home study courses re real estate and entrepreneurship.”
So he used his last name plus UNIVERSITY for this. But there was this disclaimer: “No claim is made to the exclusive right to use UNIVERSITY apart from the mark as shown.” If your mark contains the word UNIVERSITY and the trademark will be applied to educational products, you are most likely going to be required by the Trademark Office to disclaim, in other words, to say that you don’t have the exclusive right to use the word UNIVERSITY in conjunction with your educational products or services. Now, let’s go ahead and look at the next one.
So this one, the next document was again, TRUMP UNIVERSITY for Educational Services in the nature of conducting online courses in the field of business and real estate. Now, this is kind of interesting. There was no disclaimer required here, which I thought was a bit inconsistent. I don’t know why they did this. The Trademark Office is often inconsistent in the way they treat applicants and applications. See reg. 3112873 for TRUMP UNIVERSITY in 041: Educational services in the nature of conducting on-line courses in the fields of business and real estate.
One thing that we deal with as practitioners is we often have one situation for one client and so we expect that the next cilent’s case will be treated similarly, but sometimes then we get another examiner and the other examiner treats the same situation completely differently. It can sometimes be frustrating, because we are trying to learn how the trademark office views certain circumstances and fact patterns, and
So in short, you may be able to use UNIVERSITY with your goods and services, but it may depend on the goods and services that you are associating that mark with. I recommend if you’re going to try to register something like this, that you seek advice from a competent trademark attorney before you register anything, because if you apply, you may make some admissions that don’t benefit you in the ultimate outcome of the trademark registration that you’re attempting to get.
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