University Bookstore v. University of Wisconsin Board of Regents

University Bookstore and other retailers (retailers) (opposers) opposed an application by the University of Wisconsin Board of Regents (university) (applicant) to register “Wisconsin Badger” and various designs of the university’s mascot, Bucky Badger. The Bucky Badger character was created in 1940 when one of the retailers commissioned an artist to produce a sheet of decals with mascots representing the university. That retailer had been selling decals depicting Bucky continuously since 1940, and others did so later. The university’s earliest use of the Bucky character was in 1948. The retailers were selling clothing imprinted with Bucky by the early 1950s. The university did not market similar items until some 30 years later. The word badger had been associated with the university for much longer, having been the title of the university’s yearbook since 1893. The badger was also the state animal, and Wisconsin was known as the badger state. The earliest documentation of the university’s athletic teams as the Wisconsin Badgers occurred in 1945. The retailers did not use the subject marks to identify their own goods and services and did not claim the marks as their own. Except for one minor instance, no evidence suggested that goods sold by the retailers over the years were not of merchantable quality. The retailers argued that (1) the university did not create the marks in question, (2) the most the university could argue was that people associated the marks with the university, and (3) whatever ownership the university may have had in the marks was abandoned because the university failed for many years prior to the registration to control the nature and quality of numerous third-party uses of the marks.