The Collegiate Licensing Company (CLC) hereby protests your company’s
unauthorized use of the trademarks of the University of Florida on t-shirts.
The t-shirt at issue is advertised on your website, www.buckeyesvsgators.com.
A photo of a page from your website is enclosed. Your company must immediately
cease and desist using the trademarks, name, logos, colors, slogans, mascots
and other indicia associated with the University.
CLC is the authorized licensing representative of the University of Florida
and the universities, colleges, bowls and athletic conferences on the
attached list. CLC represents this institution in connection with the
licensing, protection and enforcement of its names, logos, slogans, mascots
and other proprietary rights (hereinafter “Marks”). The institution
owns all rights, title and interest in its respective Marks.
Accordingly, no one is authorized to manufacture, distribute, advertise,
offer for sale and/or sell any products bearing the Marks without the
express written permission of CLC and/or the University.
Notwithstanding this, it has come to our attention that you and/or your
company are using the Marks of the University of Florida in violation
of federal and state laws. Specifically, one of your designs includes
the singular version of the University’s GATORS word Mark,
which is federally registered. Your company’s unauthorized use of
the Marks constitutes infringement and unfair competition in that your
company’s customers will erroneously believe that the t-shirt has
been licensed, sponsored or authorized by CLC and/or the University.
In addition, your company’s use of the Mark without approval will
dilute their distinctiveness by trading upon the goodwill and reputation
that the public associates with the University and its Marks. It will
also interfere with CLC’s merchandising and licensing of the Marks
for the University.
On behalf of the University of Florida, CLC demands that you and each
and every person or company affiliated with you immediately discontinue
the sale, offering for sale and/or distribution of any unauthorized products
containing their Marks. CLC further demands that you advise us in writing
of your company’s compliance with the foregoing and furnish us a
list describing each item manufactured and/or sold by your company which
bears the Marks of any of the institutions and each item that your company
presently has in inventory. Include the number and sales price
of each item as well as profits earned. This information will be used
to determine the amount of damages and legal costs due for your company’s
unauthorized use of the Marks.
Unless CLC receives a comprehensive response to this letter in writing
by January 19, 2007, including assurances that your company has ceased
to infringe on the Marks, we will advise the University accordingly
and suggest a course of legal action. This letter is without
prejudice to any claim for damages or other relief in the event that litigation
Associate General Counsel
cc: University of Florida
Bruce Siegal, Senior Vice President and General Counsel, CLC
Heath Price, Director of University Services, CLC
Tyler Stinnett, University Services Coordinator, CLC
Your e-mail was forwarded to me for review and response. As I stated in
letter to you, your design utilizes the singular form of the GATORS word
mark. This mark is federally registered and protected by the University
has long been associated with the school. The fact that you use the
singular form is of no real significance in this instance. Given your use
of this mark on this particular design (that also includes the school's
orange and blue color scheme, which under the recent decision in the Smack
case, is also protectable) and your clear intent to market these shirts
fans of the University of Florida, we have asked for your cooperation in
ceasing the production and sale of this item. We also request an accounting
of sales and a statement of inventory.
If you have any further questions or would like to discuss, please feel
free to contact me.
Associate General Counsel
The Collegiate Licensing Company
290 Interstate North Circle, Suite #200
Atlanta, GA 30339
So then my LONGER response...