Emory Report
December 12, 2005
Volume 58, Number 14


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December 12 , 2005
Trademark initiative protects Emory’s name, identity

BY michael terrazas

Through the Emory Trademark Enforcement Initiative, the Office of the General Counsel is taking steps to protect the University’s identity by working with local businesses and encouraging them to drop the Emory mark from their names.

“Our most important brand is our five letters: E-M-O-R-Y,” said Senior Vice President and General Counsel Kent Alexander. “When people think of Emory as a destination, we want them to think of Emory—Emory University and Emory Healthcare—and not an unrelated business.”

Emory has been in active discussions with about a dozen area businesses to get them to change their names, and resolutions have now been reached with most, according to Associate General Counsel Chris Kellner, who joined the general counsel’s office this year after working as a partner at the Atlanta-based firm of Kilpatrick Stockton’s prominent intellectual property practice. “We will soon be approaching other businesses,” Kellner said.

In 2004, the University brought suit against Vision Correction Group Inc. for unauthorized use of the Emory name. The suit was quickly settled, Alexander said, and a permanent injunction was issued protecting the University’s trademark rights. Alexander added that such litigation is a last resort and may not be necessary since several of the businesses have been cooperative. For example, the Emory Animal Hospital, located on Clairmont Road near N. Decatur, has agreed to phase out “Emory” from its name; Emory Chinese Academy agreed to change its name and held a contest to select the new one (Atlanta Contemporary Chinese Academy) ; and Emory Village Flowers & Gifts has agreed not to sell or transfer the Emory name and will stop using the Emory name if there is a change in ownership.

“I understand [the University’s] position,” said Rob Schochet, who has owned the village florist shop for nine years. Shockett said the store adopted its present name about 15 years ago; it was named Emory Florist when it opened in 1947. He said the name “Emory” also is an important part of his business, but he’s satisfied with the compromise he and the University reached.

“We worked out an amicable agreement,” Schochet said. “They want to keep their name and protect it and not let anyone feed off it.”

Russell Walden, an attorney who represents Emory Animal Hospital, said the University took “the opposite of the big-stick approach” in opening a discussion with his client.

“Though I suppose our legal positions were adversarial, Emory never treated us as adversaries,” Walden said. “Emory approached it in a much more enlightened way than the junkyard dog, lawyer vs. lawyer method that’s all too common these days.”

“If it’s a business that’s been around for some time, we’re going to work with them and give them a reasonable amount of time to phase out the name,” said Kellner, adding that University also is willing, in some instances, to defray some of businesses’ “hard costs” (signage, letterhead, etc.) of name changes. “Almost always it ends up being a very cooperative approach, where we recognize them and affirm them as our neighbors, as people who are friends of the University, and try to work out a way for them to change their name as painlessly as possible.”

“I would much prefer not to litigate with anyone, especially our neighbors,” Alexander said.

Protection of the mark always has been important to Emory, Alexander said, but it is especially relevant now that the University has begun marketing itself more strategically. For example, in July 2004 Emory formalized its program for granting third parties explicit permission to produce merchandise bearing Emory’s marks, in accordance with quality control and other standards. Among the program’s goals are managing royalty revenue and ensuring that products reflecting the University trademark are consistent with Emory’s goals and values. About 65 vendors now are licensed to use Emory trademarks.

“The Emory Trademark Licensing program ensures Emory’s brand identity is properly represented in the marketplace, to promote and build Emory’s brand in the marketplace, and to generate income,” said Jan Gleason, associate vice president for marketing communications, who manages the program. “The University, in cooperation with our licensing agent, Licensing Resource Group, vigorously enforces our trademark rights.”