Schools Seek to Stop Illegal Use of Their Names

In an unusual step for public schools, the is considering registering its high schools’ names, logos and mascots with the U.S. government as a way of protecting how the schools are used in everything from sweatshirts to party goods to TV commercials.

The school board is slated to consider a policy it calls “image management” at an upcoming meeting. It was prompted in part by the airing of a TV commercial during NBC’s Sunday Night Football this fall. Toyota Motor Sales sponsored a series of ads created to look like a professional halftime show, but instead featuring Pee Wee football teams from around the country in what it called the “Tiny Football League.”

Many of the commercials were shot at Tesoro High School. The school’s giant grid-iron “T” was seen prominently in the first installment of the series, which ultimately handed out $50,000 to various teams around the country, including a first prize of $10,000 to the local Saddleback Valley Wolverines. 

Although school officials at Tesoro were aware of the commercial shoots, a January report to the school board said the Tesoro mark was used “without district approval.”

Ironically, Tesoro is the only Capo school to have registered its name with the U.S. patent and trademarks office. The trademark protects Tesoro’s names on hats, hooded sweatshirts, polo shirts, shorts, jackets, sweatshirts, sweat shorts and T-shirts. An example of an authorized Tesoro shirt is on file with the government here.

James Paulos, Tesoro’s activities advisor, took it upon himself in April 2009 to register the school’s name after seeing several local businesses profiting by using the name without asking permission.

For example, he said, in Mission Viejo has sold balloons with Tesoro’s name on it. An online apparel vendor sold clothes and gear with Tesoro’s name.

“It wasn’t even our product, and [parents] were calling me to complain about the quality of the product or that their order was delayed,” Paulos said. “I personally received the calls.”

He realized those were sales that Tesoro was losing. “We need to keep every dollar on our campus. That money goes in to our kids’ programs,” he said.

So he asked the student government for the money and approval to register Tesoro’s name. The effort took 11 months and about $600.

“We have made all that money back and more,” Paulos said.

In searching the national database of registered trademarks, few high schools appear. Of the handful that do, most are private schools. Tesoro and Beverly Hills High are the exceptions.

“It’s very unusual what [Capo is] doing,” said professor Roy Yarbrough of California University of Pennsylvania. Yarbrough is considered the country’s foremost expert on collegiate and high school mascots, having written a book on the subject.

It is more common for universities and professional sports franchises to go after any unauthorized use of their names, logos and mascots, Yarbrough said.

The effectiveness of a registered trademark is only as strong as the wherewithal the trademark holder has in trying to stop illegal uses of those marks, Yarbrough said.

“First you’re going to have to catch them. Plus, then you’re hauling them into court. You’re going to have to prove the high school lost money,” he said. Legal bills could amount to more than $10,000, all for an item that may have cost the school $1,000 in lost revenues.

“It’s mostly symbolic,” Yarbrough said of registering a high school’s trademark.

But Tesoro’s Paulos doesn’t think so. He depends on a network of parents to spot misuse of the Tesoro name. He then goes into the stores to talk to the shopkeepers, armed with his paperwork, not only from the U.S. government but also the NFL, which has granted Tesoro exclusive rights to use “Tesoro Titans” (Paulos said the NFL keeps a tight watch on all uses of the word Titans because of the Tennessee Titans).  

He said shopkeepers have responded immediately to the school’s wishes. None of the contacts has become contentious. In the case of the balloons at Party City, the school bought out the entire stock and resold them at graduation, Paulos said.

“We’re out there to protect our students, protect our brand and—to put a positive note on it—to build relationships [with businesses] and work with them, to bring them into the family,” Paulos said.

has gone a different route. It has contracted with Global Village Concerns, a San Diego-based company that helps create school logos that it puts on clothes and other items as an exclusive vendor. It returns 20 percent of the proceeds to the school.

“We are still in the early stage of this, and the jury is still out on our satisfaction,” said Principal Tom Ressler.

San Juan Hills has yet to file an application for a registered trademark, Ressler said. While he sees the advantages, it can be a double-edged sword.

“On the one hand, we believe that, like any business or school, we should receive compensation if our logos are used to make money,” he said. “However, we also like having our name in the community and do not know if, at this time, we can effectively market logo uses or monitor and enforce misuse.”

The school’s logo representing the Stallions was locally created specifically for the school, Ressler added. The horse head recently underwent a revision to make it more equine-looking. The original design was modeled after a python.

When the district’s board discussed the issue in January, trustees seemed interested in getting the trademarks—and transferring Tesoro’s from Paulos to the district.

“The ownership should reside with the district,” said Trustee John Alpay.

Trustee Anna Bryson agreed. “I think it is very important that we keep these logos under the auspices of the district.”