PUR 701: Trademark Licensing
To prevent the loss of trademark rights that can result from inadequate control or dilution of the university’s marks and symbols; to support the university’s formal and official graphic identity; and to advise ASU licensees and their contractors of the university’s “Code of Conduct for Trademark Licensees”
Trademark Counterfeiting Act of 1984
Arizona Revised Statutes §§ 44–1406 to –1413
ASU Communications Guide
University community members who produce, requisition, procure, or receive items bearing ASU marks and logos, and persons and entities outside the university community that wish to produce, distribute, or sell products bearing ASU marks and logos
The ASU trademarks are the exclusive property of the Arizona Board of Regents. By authority of the regents, Arizona State University maintains ownership of any trademarks, service marks, marks, logos, insignias, seals, designs, or other symbols or devices associated with or referring to ASU. Besides common law rights, “Arizona State University,” “ASU,” “ASU West,” “ASU Polytechnic,” “Sun Devils,” and “Sparky” (the ASU mascot) (see these marks on the Purchasing and Business Services Web site) are protected by trademark registrations with the State of Arizona and the U.S. Patent and Trademark Office in the Department of Commerce.
Regulation of all uses of ASU marks is essential to protect the university’s trademark rights and image from liability and to protect against dilution of the marks. ASU approval is required for all noncommercial and commercial uses of ASU marks. Unauthorized (noncommercial or commercial) use of a mark could effectively prevent ASU from retaining and enforcing its rights in legal and commercial contexts.
All formal and official graphic representations must adhere to the guidelines and specifications delineated in the ASU Communications Guide.
The Trademark Management Office actively polices the market and the Internet to protect against unauthorized or unlicensed use of the ASU marks, names, and symbols and to protect licensees from unfair competition. The service mission of the Trademark Management Office is to assist licensees, vendors, manufacturers, students, staff, and any other persons regarding licensing issues and uses of ASU marks on apparel and products.
Benefits to the Manufacturer
The ASU Trademark Licensing Program works closely with licensees, stores, Internet sellers, and the campus community and develops cooperative relationships with them to develop a stronger market for their products displaying the ASU name and trademarks. In addition, ASU seeks opportunities to promote sales through marketing efforts.
The Trademark Management Office offers rights to use ASU marks to those persons or organizations who meet licensing requirements and who offer products or services deemed by ASU to be appropriate for sale or distribution.
Benefits to the Retailer
The ASU Trademark Licensing Program works with retailers carrying licensed merchandise to increase sales and keep unlicensed merchandise off the shelves of competing retailers. It also maintains lists of retailers to direct customers to their outlets. The program also works with Intercollegiate Athletics and licensing agencies to market promotional opportunities and merchandise in conjunction with ASU events.
The ASU Communications Guide provides a system of graphic identity to be used for all formal and official representations of the university. Any exceptions to the formal and official use must be approved by the university president.
All uses of the ASU name and marks must be licensed or approved.
Any person or organization manufacturing a product or providing a service bearing or containing any of the marks belonging to ASU must, prior to such use of the mark, enter into a licensing agreement with an authorized agent of the university. No use of any mark belonging to ASU shall be authorized without such a licensing agreement or a written exception.
Each licensing agreement shall provide for either a reasonable royalty to be paid to the university or other consideration deemed appropriate by ASU in exchange for permission to use the mark. All exemptions for licensing or royalties must be in writing.
Royalty income should be used for support of the mission of the university. Its uses will be determined by the president.
Campus organizations making items for their internal use are to use an ASU license. All uses of ASU marks and identifiers must be approved in writing by the ASU Branding Committee, comprising the responsible administrator in the Office of Public Affairs, Trademark Management, or Sun Devil Athletics. University departments and official organizations may use “ASU” in their official operations and may also use “ASU” on products that are part of their normal operations. All manufacturers of ASU goods must be licensed.
University employees and students are not authorized to modify, change, or alter ASU marks protected by trademark. In addition, they are not authorized to employ ASU marks that are unprotected by trademark. Employees and students may not authorize any use of ASU marks without the prior approval of the Office of Public Affairs.
Campus departments and student organizations producing items, having items produced for internal use, or buying goods for resale must purchase the items from a licensed manufacturer, unless a written exception is granted. Student faculty and staff must purchase their goods from manufacturers awarded contracts by ASU Purchasing for all screen printing and embroidery.
The University Seal
The official seal of ASU (see the seal on the Purchasing and Business Services Web site) is the official seal of the state of Arizona with the words “Arizona State University 1885” encircling it. Use of the seal is reserved for formal and official documents, such as diplomas; legal and official records; transcripts; programs for formal academic ceremonies; and any legal agreements binding the university. Use of the seal requires prior authorization from the Office of the President or the Office of Public Affairs. It may be used for appropriate licensed products for resale.
The Athletic Mascot
The official athletic mascot, Sparky the Sun Devil (see Sparky on the Purchasing and Business Services Web site), was developed in 1945 to reflect the energy and enthusiasm of athletics at ASU. The official mascot is to be used primarily in association with campus programs and events. Student organizations are allowed to use the mascot with permission from the ASU Trademark Management Office.
The mascot is a copyright and trademark of ASU. The mascot must not be redrawn or modified in any way without prior authorization from the Office of the President or the Office of Public Affairs. It must be reproduced from authorized digital files or reproduction masters. The president has delegated modification approval for retail goods to the ASU Trademark Management Office.
Organizations or persons intending to make items bearing the ASU name or logo for general distribution or resale, as opposed to limited campus use, must become licensed or buy merchandise from a licensed business.
Organizations or persons wishing to purchase a product bearing the ASU name or logo for general distribution or resale, as opposed to limited campus use, must also obtain the product from a licensed manufacturer.
No organization, faculty member, staff member, or student may authorize any third party to produce merchandise bearing the ASU names or trademarks, or authorize or produce items that combine the ASU name with any third party name or logo unless approved by the Trademark Management Office.
ASU marks may not be used with anyone else’s marks unless written approval of the owners of all marks has been secured.
The Trademark Management Office is responsible for the implementation and interpretation of the day-to-day operations, noncontroversial design approvals, appropriate modifications for retail, and control of the university’s identifying marks for negotiating licensing agreements. No other office, department, or agency is authorized to perform trademark licensing program administration. Controversial product designs and sensitive issues will be reviewed at appropriate administrative levels.
Manufacturers or members of the university community wanting to expand the types of items bearing ASU marks must have each product approved by the Trademark Management Office or its legal agent. Prospective licensees shall furnish, free of cost to ASU, a representative sample of each item to be approved for licensing. If there are many products, a representative sample and product catalog will suffice. All designs to be used on any product must be approved prior to sale and indicated clearly in the license agreement.
|Note:||If a finished product bearing ASU marks is not available, then a sample must be submitted. A drawing may be required showing where and how the ASU marks are to be used.|
All product approvals by the Trademark Management Office and its agent must be in writing. No verbal approval will be valid.
ASU recognizes that some creative designs may alter the traditional usage of marks. Variations of these designs and product samples must be submitted to the Trademark Management Office for approval prior to their public release. This includes product packaging, point of purchase displays, commercial Internet uses, and all forms of product promotional materials. ASU reserves the right to require correction or alteration of any use of its marks deemed inappropriate by the university.
University employees and students are not authorized to modify official ASU marks protected by trademark. University applications are governed by the ASU Communications Guide. For more information on ASU graphic standards, see PUR 402–05, “ASU Graphic Standards.” Commercial uses must be specifically identified and delineated in contracts rather than be broad and implied.
ASU will not license products that defame the university, or are medical, dangerous, harmful, shoddy, obscene, firearms, or otherwise deemed inappropriate for reasons of the item characteristics or manufacture.
ASU actively protects its identifying marks and enforces its trademark rights. The ASU Trademark Management Office takes an active role in preventing trademark infringement by educating the ASU community and searching the internal and external market for infringers. If a trademark infringement occurs, ASU may proceed to take legal action as the situation warrants.
Arizona State University exhorts all licensees of ASU and their contractors to maintain a fair, safe, and nonexploitive working condition for all of their employees. The university has the right to terminate licenses immediately for failure to comply with these expectations.
ASU is committed to conducting its business in an ethical and socially responsible manner consistent with its educational mission. As a condition of being permitted to produce or sell licensed products bearing the name, trademarks, or images of ASU, each licensee must comply with this Code and ensure that its contractors comply with this Code. “Licensee” includes all persons or entities that have entered a written Licensing Agreement with ASU through its trademark licensing agent to manufacture products bearing the name, trademarks, or images of ASU. “Contractor” includes each contractor, subcontractor, vendor, or manufacturer engaged in a manufacturing process that results in a finished product for the consumer. “Manufacturing process” includes assembly and packaging. ASU may modify this Code to reflect changes in manufacturing conditions or developments relating to monitoring.
If ASU determines that a licensee or contractor has failed to remedy a violation of this Code, then ASU will consult with the licensee to determine the appropriate measures to be taken. At a minimum, the remedy will include taking all steps necessary to correct the violation, including paying any portion of back wages found due to workers who manufactured the licensed articles. If these measures fail to resolve the violations within a specified time period, then licensee will implement a corrective action plan on terms acceptable to ASU. ASU reserves the right to terminate its relationship with any licensee that continues to conduct its business in violation of the corrective action plan. ASU will provide the licensee 90 days prior written notice of termination.
IV. Compliance and Disclosure
Licensees will provide the following information to ASU or its trademark licensing agent at least 60 days prior to the date of the annual license renewal: (a) the company names, owners and officers, addresses, phone numbers, e-mail addresses and nature of the business association for all of the licensees’ contractors and manufacturing plants that are involved in the manufacturing process of items which bear, or will bear, the name, trademarks or images of ASU; (b) written assurances that it and its contractors adhere to this Code (except that in the initial phase-in of the Code, licensee must also provide written assurances within six months of receipt of this Code); and (c) a summary of the steps taken or difficulties encountered during the preceding year in implementing and enforcing this Code at each site.
Licensee must immediately report to ASU if changes occur, such as the selection of a new factory, that materially affect the application of these labor standards.
Each ASU licensee must ensure compliance with this Code and verify that its contractors are in compliance with this Code.
VI. Internal and External Monitoring
ASU and licensee have not yet defined methods of internal monitoring, training, and independent external monitoring. ASU and licensee agree to undertake efforts to define the obligations associated with training and monitoring and a reasonable time frame within which compliance measures, including internal monitoring and independent external monitoring, will begin.
Contact the Trademark Management Office (480/965–5499 and Fax: 480/727–9800) or the ASU licensing agent:
Collegiate Licensing Company
290 Interstate North Circle
Atlanta, GA 30339
Web site: www.clc.com/www.imgcollege.com
Send or deliver the product to the Trademark Management Office in the University Services Building or to the Collegiate Licensing Company address above.
Arizona State University
1551 S. Rural Rd.
Tempe, AZ 85287-5212
|Note:||Specifications of product composition and contents may be required.|