An intellectual-property attorney said the names do not have to be identical for there to be a trademark violation.
Regent sent a message to the Georgia board before its Aug. 7 vote notifying it the Virginia school had trademarked the name and asking it not to vote for the Regents name.
“Regent University has consistently taken steps to protect its trademarked name,” said Dr. Carlos Campo, the president of Regent University, in a statement. “We have respect for the Georgia Board of Regents but we believe that their selection of the name Georgia Regents University is an unfortunate infringement of our valuable federally registered trademark.”
A Regent spokeswoman said that the lawsuit will be filed this week but that it is not clear exactly when. It will likely be filed in Georgia, Mindy Hughes said.
Some Augusta lawyers, apparently upset over the Georgia Regents name, contacted the Virginia school about aiding the lawsuit, but the school is going to use its regular trademark counsel, Hughes said. A spokesman for the Georgia board and a spokeswoman for the Georgia Attorney General’s Office said they do not comment on pending litigation.
Just after the Georgia board voted this month, a university system official said its counsel thought the name was broad enough that the Regent University suit would not prevail.
The standard the court would use is not whether the name is exactly like the trademark but whether “the phrase is confusingly similar,” said intellectual-property attorney Tim Moses, of Augusta.
“Really, what you are trying to prevent is confusion in the marketplace,” he said.
In a letter to the Georgia Regents before the vote, attorney Ronald A. DiCerbo cited similar language in asserting that “any use by your institution of the mark ‘Georgia Regents University’ in the United States is likely to cause confusion with Regent University’s REGENT UNIVERSITY trademarks.”
“Such use is also likely to lead persons to believe that the Georgia Regents University and its educational services are in some way associated with or endorsed by REGENT UNIVERSITY,” he continued. “Further, such use will serve to dilute Regent University’s trademarks.”
Often, sending a letter to the other party pointing out the likelihood that using the trademark will cause confusion among competitors in a similar marketplace is sufficient, Moses said. Pointing out differences, such as the use of the word Georgia or vastly different color schemes or logos, could help bolster the claim the two are not that similar, he said.
“Anything that you do to distinguish your mark from theirs helps,” Moses said.