The Wharton School Goes to Trademark Court to Protect Its Business Reputation

by Winthrop & Weinstine, P.A.

Earlier this week, Joseph N. DiStefano of reported that the University of Pennsylvania filed suit in federal district court to protect its well-known federally-registered rights in the WHARTON name and mark. (Hat tip to guest blogger Dave Taylor of Taylor Brand Group).

For those who have not been paying attention to business for the past 132 years, The Wharton School is the world’s first collegiate business school, established in 1881, as part of the University of Pennsylvania. It has a remarkable reputation as one of the top business schools in the country.

It has one of the most published faculties and one of the largest and most influential alumni networks. And, we know how smart Wharton students are, as one of our talented guest bloggers, Nick Olson, is a UPenn law student who will graduate in 2014 with a J.D. and a Certificate in Business from the Wharton School. Remember his insightful blog posts on IP Valuation and Poetry in Slogans?

Not surprisingly, the lawsuit asserts pretty standard claims for federal trademark infringement, federal unfair competition, federal trademark dilution (blurring and tarnishment), federal cybersquatting (for registration in September 2012 and use of, Pennsylvania statutory unfair competition, and Pennsylvania common law unjust enrichment, against a financial consulting firm in New Jersey called Wharton Advisors Corp. Here is a copy of the complaint and exhibits.

The University of Pennsylvania’s Wharton School further complains that the defendant has filed for federal registration of the claimed mark WHARTON ADVISORS CORP, noting that the words ADVISORS CORP have been disclaimed, “leaving the University’s mark WHARTON as the sole distinctive element” of the defendant’s claimed mark. Surprisingly the complaint doesn’t appear to request that the court declare the mark unregistrable nor does it request that the court order the defendant to abandon it, perhaps because The Wharton School doesn’t believe the application will survive examination at the USPTO.

The untold irony, however, is that the application will most likely not survive examination, and most likely will never be published for opposition, not because of the University of Pennsylvania’s federally-registered rights in WHARTON, but because of a third party’s 1998 federally-registered rights in another WHARTON mark, namely, WHARTON CAPITAL for investment banking services apparently offered since 1977. The WHARTON CAPITAL registration has been incontestable for a decade now, so I suspect Wharton Advisors Corp may argue that this registration and the associated use of the Wharton Capital name and mark has a necessarily narrowing effect on the University of Pennsylvania’s scope of rights in WHARTON, at least when it comes to being able to reach those who provide financial services, as opposed to educational services.

In fact, the USPTO initially has refused registration of WHARTON ADVISORS CORP under Section 2(d) of the Lanham Act, based on a perceived likelihood of confusion with the WHARTON CAPITAL mark — none of the University’s WHARTON marks were cited as potential bars to registration. Interestingly, the USPTO also cited the WHARTON CAPITAL mark, and not any of the University’s WHARTON marks against this additional third party application for yet another WHARTON in the financial services world, namely, W-WHARTON FINANCIAL ADVISORS mark.

The existence of such a close third party mark, WHARTON CAPITAL, of course, renders this allegation in the University of Pennsylvania’s dilution claim, a bit awkward, to say the least:

Defendant’s “use of WHARTON, WHARTON ADVISORS, and WHARTON ADVISORS CORP to promote or sell financial consulting services is diluting and impairing the distinctive quality, uniqueness and singularity of the University’s famous “WHARTON” mark by blurring, constituting dilution by blurring.” (emphasis added)

And, since Wharton Capital had to disclaim “Capital,” in the same way Wharton Advisors Corp disclaimed “Advisors Corp,” doesn’t that also leave “the University’s mark WHARTON as the sole distinctive element” in Wharton Capital’s name and mark?

There must be a backstory on how Wharton Capital avoided a conflict or survived a conflict with Wharton School, or perhaps it is as simple as someone was asleep at the wheel back in the late 70s when the use first commenced, and then again twenty years later in the late 90s, when federal registration was sought. There is no TTAB history associated with this Wharton Capital mark.

This is not the first time the University of Pennsylvania has sought to enforce its rights in the WHARTON mark, as earlier this year it brought a federal trademark infringement action against Wharton Business Foundation, see here.

So, stay tuned for further developments in The Wharton School v. Wharton Advisors Corp — not Wharton Capital (at least for now).

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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