Office of Communications

Policy and Trademarks

All information regarding The University of Texas at Dallas’ Trademark Policy has been extracted from the University of Texas System Web sites.

Policies regarding the System copyright laws and policies may be accessed at:

• http://www.utsystem.edu/ogc/intellectualproperty/copymgt.htm
• http://www.utsystem.edu/ogc/intellectualproperty/cprtindx.htm#top

General Information

A trademark or service mark may be a word, name, symbol, device or any combination thereof that is used by its owner to identify or distinguish goods or services from those of others. Unlike patents and copyrights, rights in trademarks and service marks arise as a result of use of the mark in commerce to identify the source or origin of goods and service. In addition, trademark rights do not end after a specific period of time as do patent rights and copyrights; instead, a trademark remains the property of the owner so long as the owner continues to use it properly as a trademark.

These sites provide general information about trademark searches, law and registration:

1. Legal Information Institute – Cornell Law School
2. Franklin Pierce Law Center

Purpose of Trademark Policy

To explain the features of the trademark license and the need for and character of use restrictions and creating a structure for allocation of responsibility to component institutions.

Date Approved

August 14, 1997 (Editorially amended September 2000)

Background

The component institutions of The University of Texas System (UT System) have achieved reputations as outstanding institutions of higher education. Reputation is specific to the name of the UT System and each component institution. Reputation also is represented by the seal, trademarks, logos, and service marks used by the UT System and its component institutions (UT Trademarks).

On June12,1981, the U.T. Board of Regents approved a trademark protection and licensing program for the U.T. System. In 1983, the Office of General Counsel developed rules and regulations to administer the program (the Trademark Policy). Since the program has grown in importance and revenue generation and now requires some modification to and formal approval by the U.T. Board of Regents of the Trademark Policy, the Board adopted the U.T. System Trademark Policy as follows:

Trademark Licensing

In 1981, the Board of Regents of The University of Texas System approved a program to protect and license trademarks of its component institutions. That program included the following elements:

1. Authorization to file applications for state and federal registration of University trademarks, such as the names, seals, logos and mascots of all component institutions, in the name of the Board of Regents.
2. Approval of a standard trademark license agreement permitting commercial use of University trademarks on products with a royalty on the sale of such products.
3. Delegation of authority to execute trademark license agreements on behalf of the Board of Regents.
4. Authorization for component institutions to use royalties that exceed the expenses of registration and administration of licensing to establish appropriate scholarship programs.

Trademark License Agreement

The standard trademark license agreement contains the following provisions:

1. License Grant--A nonexclusive right to use the licensed marks in the United States on and in connection with licensed products of quality acceptable to the Board of Regents.
2. Term of Agreement--Three (3) years unless licensee wants a shorter term.
3. Payments by Licensee--A license issue fee at the time the agreement is executed; a continuing royalty on all licensed products sold; and a minimum annual royalty.
4. Exemptions from Royalty Payments--There shall be no exemptions from royalty payments on licensed products, including those products sold to a University-owned entity by the licensee and products purchased solely for the purpose of resale, except as provided in these Guidelines.
5. Quarterly Reports--Licensees must submit quarterly reports stating the total sales of all licensed products for that period and remit at that time the amount of royalties due from those sales.
6. Delinquent Payments--Assessed a late charge at the maximum rate of interest permitted by law.
7. Right to Audit Licensees--To examine the licensee's books of account and records related to the licensed products to determine the accuracy of the statements submitted by licensees. If an examination reveals underpayment by more than five percent (5%) of the total due, the licensee shall bear the costs of the audit.
8. Default and Termination--If a default is not cured within thirty (30) days of notice, a notice of termination shall be served on licensee.
9. Sublicensing or Transferring Rights--No right to sublicense and any change or proposed change in the ownership or control of licensee's business must be provided to the Board of Regents.
10. Quality Control of Licensed Products--All licensed products shall be products of quality as determined by the Board of Regents or its representative. Licensees are required to furnish to the Board of Regents or its representative, for approval and free of cost, a sample of each licensed product before sale or distribution.
11. Packaging and Advertising of Licensed Products--All packaging and advertising bearing any licensed mark shall be subject to prior approval by the Board of Regents or its representative.
12. Indemnification by Licensee--Licensees are wholly responsible for all products manufactured or sold by them and must indemnify and hold harmless The University of Texas System, its Regents, officers, employees and agents for any liability, loss, damage, cost or expense attributable to any of licensee's products bearing the trademarks of any component institution of the System.

The Regents' Rules and Regulations place responsibility for administering the trademark licensing program in the Office of General Counsel.

The success of the UT Trademark licensing program is evidenced by the fact that annual royalty income from more than 800 licensees now exceeds one million dollars. Royalty income is dedicated to scholarships at the component institution whose trademarks have been used by the licensees. Consequently, the purchase of products licensed by the UT System provides funds that permit persons with financial need to attend a university. Conversely the sale of a product with an unlicensed UT Trademark is an infringement of the UT System’s valuable trademark rights and diminishes the ability to provide scholarships for students.

Trademark Use Restrictions

To fully protect The University of Texas System trademarks so that they remain valuable assets for years to come, System registers the marks and manages them through licensing. These two steps would not be sufficient, however, if System licensed the marks for any and every proposed use. For example, some uses would harm the very reputation that the marks represent. In other cases, the nature of goods and services may pose such significant legal risks that they should not be licensed, and some uses may potentially harm the marks unless they are carefully controlled. To protect its marks, System has developed the following use restrictions:

The following uses will not be licensed:

• Stationery - Business-size, letterhead paper using the name or seal of a component institution of The University of Texas System.

• Alcoholic Beverages - Distilled alcohol liquors, wines and malt liquors.

• Inherently Dangerous Products - Such as firearms, explosives, fuels and paints.

• Obscene or Disparaging Products - Including, but not limited to, nude photographs, caricature poster art or designs that would tend to lower the reputation or degrade the goodwill of the University as represented by the trademarks.

• Sexually Suggestive Products - Including, but not limited to, inappropriate slogans imprinted on clothing and the configuration of certain novelty items.

• Health Related Products - All types.

• Staple Foods, Meats and Natural Agricultural Products - All types.

• Business Names and/or Logos - All types.

System marks licensed for the following uses are limited as described:

• Services - Only in accordance with the special requirements of the Office of General Counsel applicable to services.

• Academic Related Products - Only for the following types of publications:
  • Sports publications approved by the institutional president or designee, providing the licensee agrees to include the following disclaimer in the publication: “Not an Official Publication of The University of Texas (component)”.
  • Literary works that generally provide historical information about and promote the goodwill of the U.T. System or component institution. System marks may be licensed for such use by permission letter after review by the appropriate institutional officers.
• Advertising - System marks may be used in the following kinds of advertising, so long as the uses also conform to the special requirements of the Office of General Counsel contained in guidelines, checklists and interactive electronic forms applicable in each case. These are designed to help component institutions conform their agreements to standard expectations regarding both the form and substance of the agreements and the approval of ad copy and layout design.
  • Licensed product advertisements, pursuant to the terms of a trademark license agreement.
  • Informational, congratulatory or “team spirit” advertisements, pursuant to a permission letter for one-time only use.
  • Corporate advertisements that focus on the academic and athletic achievements of students and alumni of a component institution, pursuant to a permission letter for one-time only use with prior approval from the chief administrator or designee.
  • Corporate advertisements that utilize appropriate System trademarks in official programs sold or distributed at Intercollegiate Athletic events, pursuant to the terms of an Advertising Agreement.

• Promotional activities utilizing appropriate System trademarks, pursuant to the terms of a Promotional License Agreement. Promotional activities are activities such as advertising or offering promotional products to further the growth, development, acceptance and/or sale of goods or services.

Trademark Protection

The use of a UT Trademark in conjunction with the product or service of an individual, group or corporation may damage that hard-earned reputation. For this reason, UT System has taken the action necessary to protect UT Trademarks under applicable federal and state law and has developed policies and procedures to license their use under limited circumstances (Trademark Policy).

Trademark Registration

The UT Trademarks are registered in the United States Patent and Trademark Office and with the State of Texas. Many are registered in foreign countries.

Release Forms

The University of Texas at Dallas requires fully executed Release Forms prior to using a person’s likeness in photos, videos, CD-ROMs, Web sites, remarks, written work, etc. The Release Form documents permission from the individual to use their image, remarks or voice in promotional or advertising materials. Release Forms are not required, however, in public situations (athletic events, concerts, ceremonies) or when individuals are indistinguishable in a large crowd. Images used for instructional projects do not require Release Forms unless they are subsequently used for promotional or advertising purposes. Release Forms are also required when using an image of a person’s house or, in some instances, property or when using any trademarked or copyrighted items. Copyrighted items would include logos, products, books, artwork, CDs, etc.

It is important to note, especially in a university setting, that individuals under the age of 18 need the signature of a parent or guardian on a Release Form. Parents or guardians must sign the Release Form before the photo of a minor is taken.

Unless noted otherwise, as in some stock photos, images are generally owned by the photographer or the organization employing the photographer. It is important to determine specific “terms of use” prior to publication and images should not be contracted on a “per use” basis. Attribution for photos should be noted when appropriate (e.g., Photo Courtesy of Associated Press International).

Although there are varying interpretations to “Fair Use,” as a matter of courtesy–as well as law–Release Forms should be obtained for any identifiable photo used in university media. Forms should be kept on file by the department or office originating the use with a copy forwarded to Photographic Services (MC 33).

Release forms may be downloaded. Release forms should be edited to accommodate the specific release needs. For example, if no video is being used, that section should be eliminated from the release. The release should be kept as simple as possible for the individual signing.

Trademark Inquiries

Inquiries regarding The University of Texas at Dallas’ Trademark Licensing and Registration may be directed to Lauraine O’Neil at (972) 883-4427.