Jim Dey: Chicago judge rules in UI's favor on Chief Illiniwek trademark -- for now

Oct. 11—Chief Illiniwek long ago was ousted from the University of Illinois, banished for being an intolerable display of hateful oppression by society's moral arbiters.

But the disagreement over his expulsion continues, even in unlikely places like the Chicago federal courts.

That's where U.S. Judge John Blakey recently sided with UI trustees and Chancellor Robert Jones by rejecting Vintage Brand's claim that it's entitled to sell merchandise bearing the logo of the former UI symbol.

Vintage Brand, which does business under the name Prep Sportswear, unsuccessfully argued that the UI had "abandoned" the mark, thereby allowing Vintage to embrace it.

Blakey rejected that claim. But the case is not over.

The judge said "the record ... does not establish as a matter of law that the University abandoned the Chief logo."

"Instead, and unsurprisingly since discovery has not yet closed, the record leaves unanswered material factual questions as to whether the College Vault program qualifies as a bona fide use of the Chief logo," Blakey said.

Although he denied Vintage's motion, Blakey said "its affirmative defense (of abandonment) remains viable for later resolution."

Although the UI discourages it, sales of Chief-related items continue.

Merchandise "is on offer through our website," Gameday Spirit Regional Manager Cory Shumard said.

Gameday has two local stores where it sells UI-related items. But Chief fans must go to gamedayspirit.com and click on the "Chief" link at the top right side of the page if they'd like to purchase it.

That even such limited availability exists at all enrages Chief foes. They have continually called upon UI officials to do away with Chief-related merchandise in its entirety. But UI officials contend that keeping Chief merchandise minimally available prevents others from using the logo.

The pending legal question is whether that claim is correct.

The judge's ruling came in response to a Vintage motion for "partial summary judgment on its affirmative defense the (UI) abandoned the Chief logo."

As part of its effort to defenestrate Chief Illiniwek and the logo, the UI sought to discourage sales by putting the logo in the College Vault program. Under that program, as of 2018, eight apparel and merchandise manufacturers are licensed to sell "vintage-themed" Chief items.

UI officials' decision to require purchases to be made online has succeeded in smothering sales of Chief items.

Between 2013 and 2022, Blakey said, "licensed" sellers have sold just 27,249 Chief products for a total of $459,749.

Between 2009 and 2022, the UI generated $112,370 in royalties. Blakey noted that amounts to "no more than 0.6 percent" of its total licensing revenue.

Vintage argued the UI's strict controls that produced "de minimis" sales are evidence of abandonment.

In his lengthy opinion, Blakey quoted at length the UI's current view that Chief Illiniwek is "not coming back" and various top UI administrators' condemnations of the logo's continued use.

Vintage cited those comments, as well as the UI's 2007 disavowal of Chief Illiniwek, as evidence of "abandonment," an affirmative defense to an allegation of trademark infringement.

"Non-use for three consecutive years," Blakey pointed out, is "prima facie evidence of abandonment."

At the same time, "evidence excusing the non-use or demonstrating an intent to resume use" rebuts the abandonment argument.

Vintage argued that UI action regarding the logo represents an unlawful "trademark maintenance program" that "reserves a right" of "bona fide use" in the future.

"Such use does not suffice to establish bona fide use," Blakey wrote.

That's why Blakey said further investigation on both sides is necessary to resolve a factual dispute.