## Facts

- The Board of Regents of the University of Wisconsin System sought federal registration for “Bucky Badger” design marks, a “Bucky on W” design, and the word mark “WISCONSIN BADGERS” for apparel and for educational and entertainment services.
- Independent Wisconsin retailers and a merchants’ federation opposed the applications, challenging the University’s entitlement to register and asserting, among other theories, public-domain status and abandonment through uncontrolled third-party use.
- One opposer commissioned an artist in 1940 to produce decals depicting a badger mascot later known as “Bucky Badger” and sold such decals continuously from 1940; the University’s earliest use of the Bucky character was found to be 1948.
- Retailers began selling clothing imprinted with Bucky by the early 1950s, while the University did not market similar merchandise until decades later.
- “Badger” had long been associated with Wisconsin (including as the state animal) and “Wisconsin Badgers” was documented as identifying the University’s athletic teams by at least 1945.
- The retailers did not claim the marks as their own and did not use the symbols to identify the retailers as the source of goods or services; the symbols signified the University to consumers.
- With one minor exception, the record lacked evidence that goods sold by retailers bearing the symbols were not of merchantable quality.
- Opposers cited statements by some University personnel characterizing the marks as “public domain” and free for anyone to use.

## Issues

1. Whether the University was the proper owner and entitled to register the “Bucky Badger” designs and “WISCONSIN BADGERS” for the identified goods and services despite retailers’ earlier use of some depictions and public-domain arguments.
2. Whether the University abandoned any trademark rights through long-term tolerance of third-party merchandising without sufficient quality control (naked licensing).
3. Whether “WISCONSIN BADGERS,” given geographic and historical associations, functioned as a registrable mark for the identified goods and services.

## Decision

- The TTAB dismissed the oppositions and allowed the University’s applications to proceed to registration for the identified goods and services.
- The TTAB found that the marks functioned to identify the University as the source or sponsor in consumer perception, notwithstanding retailers’ early involvement with certain artwork.
- The TTAB rejected abandonment/naked licensing on the evidentiary record, emphasizing the continuing source significance of the marks and the lack of meaningful proof of quality problems.
- The TTAB treated “WISCONSIN BADGERS” and the related design marks as registrable in context because they identified the University and its teams and had acquired distinctiveness.

## Legal Principles

- Trademark ownership and entitlement to registration turn on source-identifying function and consumer perception, not solely on who first created a design or first sold items bearing it.
- Abandonment based on uncontrolled third-party use requires strong proof that the mark no longer signifies a single source; widespread tolerated merchandising alone is insufficient absent evidence of loss of source significance or meaningful quality-control failure.
- Terms with geographic or historical meaning may be registrable as part of a composite mark where, in the relevant market context, the designation identifies a particular institution through acquired distinctiveness.
- Informal “public domain” statements by personnel are evidence but do not control where marketplace use and consumer understanding show continued trademark significance.

## Conclusion

The TTAB permitted the University of Wisconsin’s registrations for “Bucky Badger,” related design marks, and “WISCONSIN BADGERS,” holding that the marks identified the University as source or sponsor and that opposers failed to prove abandonment or an inability of the marks to function as registrable designations for the listed goods and services.


Univ. Book Store v. Bd. of Regents of Univ. of Wis. Sys., 33 U.S.P.Q.2d 1385 (T.T.A.B. 1994)