College Sues Porn Site Over Its Name

[Lee]

National American University, which has campuses in several states, is suing a pornography site, claiming trademark violations and cyber piracy for its use of Naughty American University and the acronym NAU.

Dlorah Inc. filed the civil complaint in federal court in Rapid City, where the company is based, against La Touraine Inc., a corporation registered in Nevada with a San Diego business address.

The lawsuit seeks to prevent the use of the school's trademark and also asks a jury to award financial damages.

Dlorah has operated under the National American University and NAU names since 1997 and offers associate, bachelor's and master's degree programs on 16 campuses in South Dakota, Colorado, Kansas, Minnesota, Missouri, New Mexico and Texas. It also has distance learning courses over the Internet.

NAU has spent millions of dollars promoting its trademark names through advertising on various mediums, the lawsuit states.

But on Sept. 12, 2003, La Touraine registered a domain name and started offering pornographic and sexually explicit adult entertainment services under a Web site called Naughty American University.

On March 13, 2004, La Touraine began selling sexually explicit content with college and academic themes under a Web site named Fast Times at NAU. The company sought to trademark the name but abandoned the effort after Dlorah filed an opposition, according to the complaint and attached documents.

Both names are "nearly identical in sight, sound and commercial impression" to National American University and its acronym, the lawsuit states.

Besides making money off the names, La Touraine's use of them likely creates confusion among students, potential students, alumni and parents, and causes people not to seek the school's education services, it claims.

"These activities are likely to cause consumer confusion and harm Plaintiff's goodwill established in its National American University and NAU trademarks," it states.

A man contacted Thursday at La Touraine in San Diego said he did not want to comment. The company's lawyers have not yet filed responses to the complaint in court.

Dlorah's attorney did not immediately return a telephone call.

http://www.sfgate.com/cgi-bin/articl...n035603D96.DTL

Say what? Naughty America University sounds nothing at like North American Universisty to me other than the 'American/America University' part of course.

I guess this university cant get a government bailout so they went for the next best thing.

Regards,

Lee

[DrChango]

was wondering about that...thought it would be Northern Arizona University who would strike first

[gaybucks_chip]

This is the most ridiculous thing I've ever heard. Unless National American University has a trademark on NAU (which I can't imagine they do, given there's Northern Arizona U and lots of other NAUs) this will get bounced out of court, and probably, in the process, get Naughty American U a ton of members.

Dumbasses.

[nickbaer]

That University should think twice before wishing for something.

[basschick]

well, the article does say:

The lawsuit seeks to prevent the use of the school's trademark and also asks a jury to award financial damages.

This is the most ridiculous thing I've ever heard. Unless National American University has a trademark on NAU (which I can't imagine they do, given there's Northern Arizona U and lots of other NAUs) this will get bounced out of court, and probably, in the process, get Naughty American U a ton of members.

Dumbasses.

[gaybucks_chip]

Well, I stand corrected.

Somebody at the US Patent and Trademark Office is asleep at the switch. They granted a trademark for the mark "NAU" to Northern Arizona University for the class 100.101.107, which is for providing educational services, but then they ALSO granted a trademark for the mark "NAU" to National American University. in the exact same class. That is a big no-no, and I can't believe that Northern Arizona University didn't object. There are several other NAU marks out there (cutlery, luggage, etc) but not in the same class as these two.

But the stupid thing is, the mark that Naughty American was trying to get was for "Fast Times at NAU", not for "NAU", and specifically was in the class of "adult entertainment website", not in the class of providing educational services. There's no case here. It would be like Delta Airlines claiming that Delta Dental couldn't use the same name "delta" because it would be too confusing; they are completely different trademark classes.

The people at National American University are treading on really thin ice. If Northern Arizona U gets wind of this, they will no doubt raise a stink, which will cause National American to lose their mark, since, as far as I know, you can't have two owners of identical trademarks in the exact same class, and Northern Arizona has had their mark a couple years before National American did.

This makes me want to put out a DVD called "National American Boys"

[boygloryhole]

interesting article...

[cbl_chaz]

ok...color me "Naughty" (no pun intended), but Northern Arizona University has been notified of the double trademark issue via an anonymous email. That's what happens when you come after one of "Us". We have to stick by each other especially in times of crisis.
Now let's see these collegiate goofs litigate their way outta THIS one, LOL

[born4porn]

Well, I stand corrected.

Somebody at the US Patent and Trademark Office is asleep at the switch. They granted a trademark for the mark "NAU" to Northern Arizona University for the class 100.101.107, which is for providing educational services, but then they ALSO granted a trademark for the mark "NAU" to National American University. in the exact same class. That is a big no-no, and I can't believe that Northern Arizona University didn't object. There are several other NAU marks out there (cutlery, luggage, etc) but not in the same class as these two.

But the stupid thing is, the mark that Naughty American was trying to get was for "Fast Times at NAU", not for "NAU", and specifically was in the class of "adult entertainment website", not in the class of providing educational services. There's no case here. It would be like Delta Airlines claiming that Delta Dental couldn't use the same name "delta" because it would be too confusing; they are completely different trademark classes.

The people at National American University are treading on really thin ice. If Northern Arizona U gets wind of this, they will no doubt raise a stink, which will cause National American to lose their mark, since, as far as I know, you can't have two owners of identical trademarks in the exact same class, and Northern Arizona has had their mark a couple years before National American did.

This makes me want to put out a DVD called "National American Boys"

nice post .... this really does look like a can of worms .....

[chadknowslaw]

Trademark is more like reading tea leaves than applying facts to a formula.

The closeness of the marks has to be examined. The more similar they are, the more likely there is infringement.

Target market must be examined. If the two entities are competing or essentially in the same market, the more likely there is infringement.

Similarities in display and marketing must be examined. The more similar these factors are, the more likely there is infringement.

Trademark is a murky area of law involving many many factors that all get weighed in different dimensions. However, in this case I do not feel that Naughty American University is infringing on the National American University trademark.

NAU is definitely not unique to any one university, nor are any of the terms within it unique. If the website was the same name as the university, the university may have a chance to win its claims but since Naughty America University is not the same as National American University AND -- big AND here -- they are not competing in the same market, this makes it much less likely that National American University will be successful. If National American University was selling porn of any kind there would be a real case here, but not when one sells degrees and another sells images of naked people.

I do believe Northern Arizona and National American U's can both have trademarks using NAU because there are other factors involved -- namely the National American and Northern Arizona are not the same, but that is a completely different battle. They ARE competing in the same market but this fight is not between them.

[gaybucks_chip]

I do believe Northern Arizona and National American U's can both have trademarks using NAU because there are other factors involved -- namely the National American and Northern Arizona are not the same, but that is a completely different battle. They ARE competing in the same market but this fight is not between them.

I know little about trademark law, but, correct me if I'm wrong, if both National American University and Northern Arizona University have the same mark ("NAU") registered, in the exact same class, how can that possibly be OK?

If I am Coca-Cola and I have a trademark in the class that covers carbonated beverages (or whatever that class would be), and somebody else comes along and trademarks Coca-Cola as another class of carbonated beverages, in the same trademark class, even with a different flavor beverage or whatever, how can that possibly not be confusingly similar?

What would be the possible justification for having identical marks if both products are marketed to similar audiences, are in the same trademark class, and are essentially indistinguishable from one another?

(I realize this is a different issue from the Naughty American "Fast Times at NAU" vs National American claim, I'm more just curious about trademark law in general.)

[chadknowslaw]

The real trademarks are National American University and Northern Arizona University; not the abbreviations.

HOWEVER (there is ALWAYS a however with trademark and law in general)

The World Wildlife Foundation (WWF) successfully forced the World Wrestling Federation to change its name, but only after many years and hundreds of thousands of dollars in attorney's fees.

One possibility: The trademark examiner may have given the NAU mark a pass believing that the two colleges would not be confused since one is more traditional, rah rah sports teams and dorm parties and such while the other is more non-traditional and not likely to be confused. Then the two colleges (the board of regents in the case of northern arizona) have chosen not to spend the tens of thousands of dollars necessary to try make the other one change its name.

Trademark law has no real rules, just guidelines and theories and well-paid lawyers