## Facts

- The University of North Carolina at Chapel Hill (UNC-CH) developed substantial goodwill in its name, seal, “UNC” initials, and “tar heel foot” logo, creating a market for merchandise bearing those indicia.
- Before 1982, UNC-CH did not operate a formal licensing program and permitted widespread third-party use of its indicia on merchandise.
- In 1982, UNC-CH began a formal licensing program and federally registered four marks: the University seal, the University’s name, “UNC,” and the “tar heel foot” logo.
- Charles Helpingstine operated “Johnny T-Shirt,” a Chapel Hill retail store selling apparel and related items bearing UNC-CH marks without a University license.
- The University sued for federal trademark infringement and false designation of origin under the Lanham Act and for unfair and deceptive trade practices under North Carolina law.
- Defendants denied liability, asserted defenses including abandonment and First Amendment protection, and brought counterclaims alleging antitrust and state-law violations.
- The court addressed cross-motions for summary judgment by both sides.

## Issues

1. Whether summary judgment was appropriate for either party on the University’s Lanham Act trademark infringement and false designation claims, given disputes over abandonment and likelihood of confusion.
2. Whether defendants were entitled to summary judgment on their claim that the University’s licensing/merchandising activities violated N.C. Gen. Stat. § 66-58 (state competition with private citizens).
3. Whether the University was entitled to summary judgment dismissing defendants’ counterclaims under Sherman Act § 1 and North Carolina unfair-trade-practices law.

## Decision

- The court denied both parties’ motions for summary judgment on the Lanham Act claims, holding that genuine disputes of material fact remained, including as to abandonment and likelihood of confusion.
- The court denied defendants’ motion for summary judgment on their N.C. Gen. Stat. § 66-58 claim, concluding the record did not warrant judgment in defendants’ favor as a matter of law.
- The court granted the University summary judgment on all defendants’ counterclaims, including the Sherman Act § 1 counterclaim and the N.C. Gen. Stat. § 75-1.1 counterclaim, and dismissed those counterclaims.

## Legal Principles

- A trademark owner’s prior tolerance of third-party use may support an abandonment theory, but abandonment requires proof consistent with loss of source significance; fact questions about control, intent to continue use, and consumer perception can preclude summary judgment.
- Lanham Act liability turns on likelihood of consumer confusion, including confusion as to sponsorship or approval; similarity of marks, similarity of goods and channels of trade, evidence of confusion, and intent are relevant and often fact-intensive.
- First Amendment arguments do not create a blanket privilege to use another’s marks on goods sold for profit; such arguments are typically evaluated within the confusion and unfair-competition framework rather than as categorical immunity.
- Enforcement and licensing of valid trademark rights, without adequate proof of market definition, market power, anticompetitive effects, and antitrust injury, does not establish a Sherman Act § 1 violation.
- Trademark enforcement and structured licensing, without more, does not constitute an “unfair or deceptive” act under N.C. Gen. Stat. § 75-1.1 on the summary-judgment record presented.

## Conclusion

The court left the University’s trademark and related claims for trial due to factual disputes over abandonment and consumer confusion, while eliminating defendants’ antitrust and state unfair-trade-practices counterclaims and declining to grant defendants summary judgment on their state competition theory.


Bd. of Governors of the Univ. of N.C. v. Helpingstine, 714 F. Supp. 167 (M.D.N.C. 1989)