Understanding Trademark Search Results: Cisco “Surprised

trademark-searchFor more than 10 years, Eastern Carolina University has been using the slogan “Tomorrow Starts Here.” ECU has been using their slogan for a variety of goods and services, mainly education services. In fact ECU has a trademark registration covering their slogan in connection with education services. Now Cisco Systems, computer networking behemoth, wants to join the party. Cisco has filed at least three trademark registration applications for the slogan “Tomorrow Starts Here” for various computer related goods and services. Apparently, ECU wants Cisco to leave the party. ECU announced yesterday that it has filed a lawsuit against Cisco in federal court.

One might wonder whether Cisco had its trademark lawyers conduct a  trademark search before deciding to move ahead with its Tomorrow Starts Here campaign. One might also wonder whether there is even any similarity or relationship between Cisco’s business and the business of ECU. If Cisco’s trademark lawyers did conduct a trademark clearing search, it may be that they did not believe Cisco’s use of the new slogan would create a likelihood of confusion regarding any association with ECU.

While a trademark search is obviously important, interpreting the results is equally important. After Cisco presumably, or maybe hypothetically, did a proper trademark search for the slogan in question, they probably would have noticed that ECU already owned a trademark registration covering the slogan. But a trademark search isn’t done in a vacuum. Since ECU’s trademark registration for the slogan was for different goods or services, namely “Education Services,” Cisco probably felt that they could still successfully apply and use it for their own purposes. But trademark law can be complex and there are some pitfalls that the untrained may not be aware of. ECU has made some interesting arguments that Cisco’s trademark lawyers may not have considered. For example, ECU has alleged that its slogan is a university-wide brand that covers research initiatives through ECU’s College of Technology and Computer Science. Consequently, ECU believes there is overlap between goods and services provided by Cisco and technology offerings of ECU. So much so that ECU recently filed a trademark infringement lawsuit.

Of course, a trademark search isn’t a perfect science. Cisco may have judged the ECU trademark an acceptable risk, and filed their trademark application anyway. And as far as the trademark lawsuit, perhaps ECU is just throwing out a sort of litigation ‘Hail Mary,’ hoping for some settlement money from a Silicon Valley giant. Maybe Cisco doesn’t mind the publicity.

In any event, whatever Cisco’s trademark lawyers did or didn’t know before advising Cisco regarding the new ad campaign, ECU seems set on defending a broader scope of protection for their trademark rights and registration. According to a recent statement by ECU Chancellor Steve Ballard, “ECU has used the mark `Tomorrow Starts Here’ for over a decade, including in national advertisements and publications such as Forbes and Wired.” It will be interesting to see what effect school pride has on the course of this case.

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