‘Love’ Trademark Spat Ensnares Jackson State Amid Coach Deion Spotlight
When coach Deion Sanders and his Jackson State Tigers run onto the field at Mississippi Veterans Memorial Stadium, they hear the JSU marching band, the Sonic Boom of the South, play JSU’s longtime alma mater, “Jackson Fair,” and hear the famed “Thee I Love” lyrics. That same expression also appears on shirts, shorts and other apparel often worn by Tigers fans. It’s on vanity JSU license plates issued by the state, too.
One problem with all this “love”: JSU hasn’t trademarked the expression with the U.S. Patent and Trademark Office.
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Meanwhile, a branding company, derisively described in court documents as a “trademark pirate,” has applied for registration and has sued JSU’s business partners—but not JSU itself—for infringement. Last week, the U.S. Court of Appeals for the Fifth Circuit upheld the dismissal of the lawsuit on account of JSU enjoying sovereign immunity as a public university.
The legal controversy began five years ago, when Business Moves Consulting successfully petitioned the USPTO for registration of “TheeILove” and licensed it for the sale of apparel. In 2019, the company and its business partners applied for “Thee I Love” for several uses, including on license plates (the USPTO hasn’t yet approved the application). Those behind Business Moves have been criticized for opportunistically seeking high-profile trademark registrations, including for Cash Money Records and even DJ Khaled’s son, Asahd, when they lack a meaningful connection.
Business Moves’ ability to register JSU-related marks stemmed in part from JSU not applying to register the phrase with the USPTO, despite using Thee I Love in its alma mater for about 80 years. As summarized by Judge Jennifer Walker Elrod, JSU did apply in late 2019, “but the USPTO preliminarily refused the applications because Business Moves . . . beat it to the punch.” JSU also registered the mark under Mississippi law in 2015 for use on vanity plates and in 2019 for T-shirts. The university asserts other IP rights in the phrase, as well.
Like many colleges, JSU has retained Collegiate Licensing Company to license what JSU considers to be its trademarks and other properties to apparel and merchandise companies. In 2020, Business Moves sued CLC and licensees in a Louisiana federal district court for infringement, saying they unlawfully used registered trademarks in the sale of goods.
In response, attorneys for CLC noted that JSU was “conspicuously absent” from the list of defendants. “[JSU] is strongly connected to the ‘Thee I Love’ mark,” CLC insists, evidenced in part by the campus bookstore, which only sells official products, representing “the largest retailer of JSU merchandise, including ‘Thee I Love’ products.” As CLC sees it, JSU is a necessary party to the lawsuit since it has certain, if disputed, ownership rights in Thee I Love, while CLC is merely an agent on behalf of JSU.
Yet the legal problem with Business Moves suing JSU is that as a public university, JSU is considered an “arm” of Mississippi. Under the 11th Amendment to the U.S. Constitution, states and their arms enjoy sovereign immunity from many kinds of lawsuits. This means unless JSU, one of the largest historically black colleges and universities in the country, consents to being sued, a case against it will be dismissed.
CLC and the other defendants argued that since the case concerns an unresolved legal battle over marks connected to JSU, the university is a necessary party. And since JSU enjoys sovereign immunity—and thus can’t be joined in a lawsuit—the case should be dismissed.
Both the district court and Fifth Circuit agreed. Judge Elrod noted that CLC is not a substitute for JSU in the litigation. “Collegiate,” Elrod wrote, “has no interest in the ownership of the mark, and the University maintains sole discretion to grant licensees access to the mark.” She added “the proper forum for determining the proper owner of these trademark rights is the USPTO,” rather than court.
Meanwhile, Sanders—who Judge Elrod noted “is also known as Prime Time or Neon Deion”—can continue to lead his Tigers as the Sonic Boom of the South plays on.
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