Latimer LeVay Fyock, LLCLatimer LeVay Fyock, LLC

Bowl of Confusion: The Century-Long Trademark Battle Between Miami University and the University of Miami

Miami University in Oxford, Ohio, is having a fantastic year in sports. Its football team played in the college football championship for its division, while its basketball team rolled into the NCAA Tournament with an impressive 31-1 record. As the parent of a current Miami University student (Adrian, double majoring in Supply Chain Management and Accounting at Farmer School of Business), I take vicarious pride in the RedHawks’ athletic success. But as a trademark attorney, I take a deep professional interest in a different, fascinating battle between the school and the similarly and confusingly named University of Miami.

The century-long dispute between the two institutions is illustrative of several trademark infringement and enforcement issues that frequently arise in more traditional business settings.

The History

In most trademark disputes, the party with priority is usually the victor. In this case, Miami University was chartered in 1809 and admitted its first students in 1824. It was named after the Myaamia (Miami) Native American tribe that once inhabited the Miami Valley region of Ohio.

Many decades later, in 1896, a growing city at the southern tip of Florida adopted the name Miami as well, in homage to a separate but similarly named Native American tribe from the area. About 30 years after that, in 1925, the eponymously named University of Miami was chartered there. By that time, Miami University had established itself as a major higher educational institution, counting among its alumni a president, numerous senators and governors, and other leaders in business, government, athletics, and the arts.

Understandably, the school’s alumni took great pride in their alma mater. Equally understandable, they took great umbrage when they learned about a Florida college that had adopted a strikingly and confusingly similar name. A prominent alum of Miami University drafted a protest letter to the president of Miami University, writing:

“Since the first announcements, more than a year ago, regarding the new University of Miami in Florida, I have looked in vain for even the mildest protest from the alumni and friends of our own Miami University. Presumably names of collegiate institutions are not copyrighted and these good citizens of Florida have the legal right to adopt such a name as they choose. But they certainly have not much moral right to usurp the name of a university which has established itself by more than a century of sound scholarship and effective educational service. Generations before the now famous winter metropolis of fashion was even heard of, Miami University was established, taking its name from the rivers which in turn had been named for a local Indian tribe. There are so many perfectly good names for a new and aspiring university. What justification or justice is there in appropriating one that has made its place in the academic world through more than a century of achievement?”

In 1927, the president of Miami University wrote to an upset alum stating:

“I have voiced the sentiments of the alumni to the president of University of Miami. As I told you, I do not think we have any right in the matter, but undoubtedly large confusion will arise from this joint use of the same name, which will be very embarrassing in the educational field.”

In response to the complaints, the first president of the University of Miami wrote to the President of Miami University in 1929 with a proposed solution to the situation:

“I had some correspondence two years ago with President Hughes about the matter, and the Board seriously considered changing the name to the University of Southern Florida. The difficulty in that is that it would again raise some confusion in connection with our state university, and it might also have some effect upon municipal appropriations which we receive from the city of Miami. We are now, so far as possible, in our own publications, using the full name ‘The University of Miami, Florida.’ May I assure you that I will do everything possible to prevent the confusion of the names, and it is possible that at some future time there may even be a change in the name here which would end the confusion for all time.”[1]

Peaceful Coexistence Until National Prominence

When the president of the University of Miami offered to refer to the school as “The University of Miami, Florida,” he oversaw a struggling school on the verge of closure. Accordingly, the administration in Oxford likely presumed that its Florida counterpart would fail, thus resolving the naming dispute once and for all.

But the University of Miami soldiered on, and for about 50 years, the two schools peacefully coexisted. Such a détente was largely based on the fact that the University of Miami remained a relatively low-profile, regional institution that seemingly posed little threat to the well-established academic citadel in the Midwest.

However, football success at the institution, soon to be colloquially called “The U,” alongside the exponential growth of its namesake city in Florida, changed everything.

In 1979, the University of Miami hired Howard Schnellenberger to turn around the school’s moribund football team. Schnellenberger and his successors turned the University of Miami into a national powerhouse, which would go on to win four national championships from 1984 to 1991. Additionally, the Miami metropolitan area grew from a population of 215,000 in 1930 to 3,200,000 in 1980, and currently has a population of 6,100,000.

Given the population explosion in the Miami area and the national prominence of the University of Miami football program, the general American public began to associate Miami with the school in South Florida, not the one in Ohio. To mitigate confusion, the media began referring to Miami University as “Miami (Ohio)” rather than simply “Miami.” 

Trademark Battle Ensues

During the many decades the competition between the two Miamis remained at a low boil, neither party sought to obtain a federal trademark registration for their respective names. A federal trademark registration grants the owner an exclusive, nationwide right to use a mark in connection with the specific goods or services listed in the registration.

But the trademark truce ended on December 4, 1990, when a registration for UNIVERSITY OF MIAMI was issued covering “educational services, namely, conducting courses of instruction at the university level, and presenting various athletic events” registration number 1626363, with a disclaimer for “university.” The claimed first use date was 1925. Miami University did not oppose this application.

Then, on June 26, 2007, a registration for MIAMI UNIVERSITY was issued covering “education services, namely providing course of instruction at the college level and organizing educational and cultural exhibits, entertainment services, namely organizing and conducting collegiate sporting, dramatic, musical and recreational events” registration number 3255198, with a disclaimer for “university.” The claimed first use date was as early as 1830. 

The Patent and Trademark Office, presumably deciding it wanted nothing to do with a potential dispute between the schools, did not cite the 17-year-old and incontestable registration for UNIVERSITY OF MIAMI against MIAMI UNIVERSITY for virtually identical marks covering identical services. After the MIAMI UNIVERSITY application was published, the University of Miami did not oppose it.

So, all of these years later, both schools have federal trademark registrations for their respective names. But for a trademark registration framework specifically focused on avoiding a “likelihood of confusion” between the same or similar marks, the opposite has transpired between the dueling Miamis. One famous example involved Vietnamese student Valerie Do, who applied to Miami University thinking she would attend college in Florida. This error was mirrored fictionally for comedic effect in the TV show, “The Office,” when Kelly Kapoor mistakenly thought she was leaving Scranton, PA, behind for sunny South Florida when, in fact, she was heading to southwestern Ohio.

These misunderstandings are so well-known and frequent that when Miami University and the University of Miami play each other in football, wiseacres call it “The Confusion Bowl.”

After so much water under the Miami bridge, and with both institutions now well-known and their brands well-established, neither will be changing their name and they will continue to exist in a world that can easily mistake the two. But could this situation have been avoided? Would a different approach have resolved an issue that has dogged both schools for 100 years? Were there missed opportunities that provide instructive lessons for businesses that wish to avoid such brand-diluting conflicts today?

What Should Have Happened

The most important rule in trademark law is that trademark owners must police their marks. Common sense dictates that brand owners cannot go after every single use. However, if a junior user arrives and uses the same or a similar mark as the senior user, it is vital to stop the junior user from using it. In this case, there were two critical pivot points when the dueling Miamis could have resolved their issues with clarity rather than continuing their uncomfortable coexistence.

If I were representing Miami University during the 1920s when this issue first arose, I would have recommended that it provide sweeteners to the University of Miami to change its name. It was known that the new university was financially struggling. Providing the new school with extra funding in exchange for a name change might have worked. This advice might have been given but not acted upon because Miami University did not want to pay someone to stop using its name, or it did not think it was that much of an issue. The reasons for non-action have been lost in the sands of time.

Alternatively, Miami University could have demanded that the University of Miami change its name based on the likelihood and actuality of confusion between the two and brought an infringement lawsuit. While the University of Miami may have had valid defenses for choosing its name, the cost of the lawsuit could have convinced the upstart school to change it.

Interestingly, Miami University had another opportunity to address the confusion issue in 1990 when the Florida school applied to register UNIVERSITY OF MIAMI. Surprisingly, Miami University did not oppose the application based on its priority. If it had done so, the two institutions might have entered into a more formal coexistence agreement. As it stands, the schools are still competing for attention despite having the same name.

Takeaways

The story of the two Miamis provides lessons in brand management and trademark enforcement applicable to any business that values these critical intellectual property assets. Specifically:

  • Enforcement matters: trademark owners need to enforce their rights or risk losing them and the protections the law provides.
  • It is better to deal with the problem sooner rather than later.
  • One should never assume that a small entity will remain small.
  • Sometimes it is better to pursue a business solution rather than a legal solution to a trademark dispute. Spending money to make a problem go away can be a very cost-efficient decision.
  • If the parties decide to coexist, the coexistence should be formalized, and the rights of the respective trademark holders should be clearly delineated.

If you have questions or concerns relating to your business’s brand and how to protect your valuable rights, please contact Colin T.J. O’Brien, John Ambrogi, or your contact at Latimer LeVay Fyock.

[1] An excellent overview of the history of the dispute can be found here.