While the University of Illinois likely will never again officially sell merchandise featuring its former mascot Chief Illiniwek, no one else may do it either without the school's consent, after a federal judge declared that the university’s refusal to use its banned logo doesn’t mean the university has “abandoned” the mark.
On Sept. 29, U.S. District Judge John Robert Blakey sided with the Board of Trustees of the University of Illinois in the school’s dispute with Vintage Brand LLC, a company which specializes in selling shirts and other clothing featuring “an array of retro college designs.”
Vintage Brand also does business under the name Prep Sportswear.
U of I sued Vintage Brand in 2021, accusing the company of allegedly illegally selling merchandise containing the former school’s Chief Illiniwek logo.
The image featuring the face of a man wearing a broad feathered Native American headdress, known as Chief Illiniwek, served as the University of Illinois’ logo for decades. That ended in 2007, however, when the university’s leadership voted to join the NCAA in prohibiting the use of the logo and any other imagery that officials deemed offensive to Native American cultures.
In the years since, the U of I has entirely ended its use of the logo on any officially licensed University of Illinois apparel and other merchandise.
Further, university officials have taken a strong stance against alumni and others angered by the decision to abandon the Chief logo, with university chancellors repeatedly declaring that the Chief logo has been forever mothballed and one chancellor pointedly telling detractors that the image was “antithetical” to the goals of the school.
Given the apparent decision by the U of I to no longer associate with the Chief logo in any way, Vintage Brand sought to sell merchandise that included the logo as part of its “retro college” apparel lines.
In fighting the university’s lawsuit, Vintage Brand asserted the logo should be considered fair game, because the U of I no longer uses the logo, has not used the logo for years, forbids its official licensees from using the logo and has publicly disassociated itself from the logo in the strongest possible terms.
In response, however, the university said it should still be able to control who, if anyone, can use the Chief logo.
According to court documents, the university claims it did not “abandon” the Chief logo, but instead assigned it to its so-called “College Vault Program” through the Collegiate Licensing Company.
Launched in 2007, the College Vault allows universities to maintain their “time-honored traditions” and maintain ownership rights to otherwise defunct logos and marketing designs.
So, while the U of I has no intention to ever use the Chief logo again, so long as the logo is technically licensed to College Vault and could potentially again appear on officially licensed merchandise, no one else can use the logo in the meantime, the university argued.
Judge Blakey agreed, knocking down Vintage Brand’s argument that U of I is pulling a sleight of hand by using College Vault as little more than a vehicle to maintain its control over an abandoned trademark.
“… The relevant consuming public knows that the University publicly disavowed and ceased use of the Chief Logo long ago,” Vintage Brand argued.
The apparel retailer argued limitations imposed by the university on College Vault’s use of the logo, as well, “show that (U of I) ‘invests in concealing itself’ as the source of Chief Logo products.”
The judge, however, said that doesn’t matter, because more knowledgeable members of the public know that the university is continuing to maintain its licensing rights to the logo, as evidenced by “public reports that criticize” the university’s actions.
“… Just because Plaintiff restricts who may license the product and places limitations on those licenses does not necessarily mean that the University has concealed itself as the source or that its licensing program constitutes a trademark maintenance program,” Blakey said.
The judge denied Vintage Brand’s motion for summary judgment on the question of whether the U of I had abandoned its Chief logo.
The university’s lawsuit against Vintage Brand remains pending.
The University of Illinois is represented in the action by attorneys Jeffrey J. Catalano and Andrew L. Goldstein, of the firm of Freeborn & Peters, of Chicago.
Vintage Brand is represented by attorneys Richard D. Boostra, of Hoogendorn & Talbot, of Chicago; and Theresa H. Wang, Joshua D. Harms, Valerie A. Walker and Leslie C. Vander Griend, of Stokes Lawrence, of Seattle.