Winning the Trademark Battle, Losing the PR War: University of Cincinnati vs. Cheatham Middle School

In the United States, trademark owners are responsible for enforcing their trademark rights. Enforcement efforts typically begin and end with a cease and desist letter from the rights owner to the (alleged) infringer.

Cease and desist letters are not public documents. As such, they are often heavy-handed and overreaching with short-fuse deadlines. Presumably, the senders believe this will scare the recipients into capitulating quickly. However, this approach can backfire when the recipients go public with the dispute. This recently happened here in Middle Tennessee when the University of Cincinnati’s licensing agency sent the following cease and desist letter to Cheatham Middle School about their nickname of the last 26 years, the Bearcats:

As someone who regularly sends and responds to cease and desist letters on behalf of clients, I would characterize this one as taking a relatively light touch. There are no accusations of willful infringement. No payment demand (ahem, I’m looking at you, copyright trolls). However, the University of Cincinnati’s licensing agency is uncompromising about one demand: the middle school must cease all uses of the university’s trademarks. There is no middle ground that would allow the school to continue being the Bearcats.

In response, the school offered to create a new Bearcat logo. However, the offer was rejected. Presumably, that’s when the dispute went public and came to the attention of the university’s cross-town rival, Xavier. In a delicious twist, Xavier offered to let the school use its nickname, the Musketeers.

The school accepted Xavier’s offer, and the rebrand began this week:

From a trademark law perspective, this is a win for the University of Cincinnati. However, even when you’re right legally, you can be wrong from a public relations standpoint. Not only does the University of Cincinnati look like a bunch of jerks, but they made their rival a hero in the process.