Protecting Harvard: Words to Sue By?

Aug. 4, 2009— -- Is Harvard becoming the Nike of higher education?

The sneaker giant built a mega-successful brand in part by trademarking a common, three-word phrase that initially had no overt connection to athletic footware: "Just do it."

The most famous university in the world, meanwhile, is applying for trademark rights on phrases in which the tie-ins to Harvard are also less than obvious: "Managing yourself" and "The world's thinking." The university, as reported by the Boston Globe, already has registered trademarks for the phrases "Ask what you can do" -- from President Kennedy's 1961 inaugural address -- and "lessons learned" with the U.S. Patent Office.

A company's decision to pursue legal protections for a snappy catchphrase is nothing unusual. But for a university it's different, said Joe Dreitler, an Ohio-based trademark lawyer whose clients have included Budweiser and former Vice President Al Gore.

"This is a fairly aggressive postion for educational institutions who are not historically known for hardball competition in the marketplace," Dreitler said.

Experts say university trademarks are more common in the area of sports, with colleges staking their claims on team names, mascots and signature colors.

But some, including Dreitler, question whether a university should be trying to make the same claims on common terms in the English language.

"The idea of registering this as a trademark for education services for a university -- it does seem to be really close to the line as far as trying to take common terms in the English language and keep them from others using them to teach," he said.

Others argue that the trademarking of such slogans wouldn't actually limit education: Another university, for instance, could still use the phrase "The world's thinking" in a description in its course catalog -- it just couldn't necessarily use it in large type on the cover of the catalog, said Martin Schwimmer, a New York trademark lawyer, who represents Fortune 100 companies.

Rick Clixto, the director of Harvard's trademark office, told the Boston Globe that the university registers common phrases "for the same reason McDonald's registered [its slogan] 'I'm lovin' it.'"

Harvard's Unlikely Ally

"Since we're spending so much time and money to promote this phrase, we just want to make sure someone doesn't say we can't use it," Clixto said.

Clixto did not return calls from ABCNews.com.

Among the enthusiastic defenders of Harvard's trademarking practices is a former foe: Unofficial Tours Inc., of Cambridge, Mass., which runs the "Hahvahd Tour," a tongue-in-cheek alternative to Harvard's official campus tours.

In 2006, the university put a temporary stop to the then student-run tour -- its founders have since graduated -- and applied to trademark the name "The Hahvahd Tour."

But since then, said Jose Antonio Reyes, the vice president of development at Unofficial Tours, the tour company and the university have made amends: Harvard now cooperates with the tour and licenses the use of its trademarked names to the company for free.

"They realized that it was to the benefit of the campus and the university to concede that right at no cost to us," Reyes said. "It's just a purely symbiotic relationship."

It's Harvard's reputation for producing "such high-quality" alumni that draws tourists to the tour, Reyes said. By protecting its trademarks, he said, Harvard protects its image, which in turn, means good business for the "Hahvahd Tour."

"We want to be a part of protecting it for them," he said.

While Unofficial Tours uses the Harvard name for free, Harvard's trademark licensing business generally means big money for the university. In previous years, it has grossed $1 million per year.

But protecting those trademarks doesn't come cheap. The government charges at least $275 per trademark application, while lawyers' fees for each application can run about $2,000, said trademark lawyer Schwimmer, who does not represent Harvard. Sending a letter to a company warning of a possible trademark violation could cost another $1,000, while lawsuits costs tens of thousands.

Worth the Price?

Schwimmer, a Harvard graduate, questions whether it makes sense for his alma mater to be dishing out that much dough to protect some of its slogans.

"Should you bother? To me it's really a business cost-benefit analysis question," he said.

Schwimmer and Dreitler both said that if Harvard succeeds in its latest trademark applications, some might think twice before adopting "The world's thinking" and "Managing yourself" as their own slogans. But the law wouldn't necessarily bar other groups -- especially businesses that don't have any connection to educational services -- from using them.

"Trademark lawyers sometimes counsel people not to adopt these sort of trademarks," Schwimmer said, "because it's a can of worms."