How My Alma Mater Is Killing My Start-up

 

Unsure how to handle the sour situation, I turned to friends and advisers for help.  "SU alumni needs your help by EOD tomorrow! Trademark issue," I titled my email and marked it urgent.  "I've purchased the trademark for the word Syracutie.  Tomorrow, the school is going to oppose my application if I don't agree to hand over the rights to the mark.  They are not willing to pay me for it.  My question is this: do you think they legally have the right to my trademark based on their current portfolio of brands?  Would they win an opposition, and should I just give in?  I'm only 23, and I don't know enough about law to determine what move I should make.  Any advice you could offer would be greatly appreciated."

The response I had was tremendous.  Advisers forwarded my plea on and rounded up a dozen opinions.  Some were passionate; others were factual.  All of them had a common conclusion: "Don't give up! Syracutie is a reference to the town, and the school doesn't own that."

With that, I decided to hold strong and let the school file the opposition.  It wouldn't cost me money, at least not at first.  For all intents and purposes, the mark was mine to use in the meantime.  The next day, I sent the most lawyery-sounding email I could muster and declined the school's offer.

SU filed for an opposition and was granted 3 months to state their case.  The first two months passed without a peep from the school.  They filed no paperwork and did not contact me.  Caught in a limbo of uncertainty, I finally broke down and emailed Dan on Labor Day weekend.

"Hi Dan," I kept the email cheery.  "I hope you've been well! I wanted to know if you had a chance to discuss with your lawyers anything about the opposition, or if you'd be willing to work out an agreement. I would still very much like to work together with the school.  Please let me know where things stand when you get a moment."

A few days later I received a brief response.  "Hi Alyson, yes, we'd like to work out an agreement.  I'll have our legal counsel follow up with you."

After that, I literally did not hear anything from the university.  November 15 came and went and the chance to oppose had come and gone. "Syracutie is mine!!" I triumphantly bragged on my Facebook status.  In January, I received my official trademark notification.

With new found confidence, I planned a trip to campus to meet with the Syracuse lawyer.  He handed me paperwork to sign that suggested a very strict, non-flexible plan: I could be the exclusive licensor of Syracutie, (which would mean no one could use that word without my consent, even the university).  In exchange, I'd have to hand over my trademark for free. So no money upfront, possibly a lot of money with a lot of work down the road, but no opportunity to sell my mark or license it out.

When I asked him what would happen if I didn't agree, he said the school could sue me, or at the very least cancel the trademark. Now I may not know a lot about law, but I know doing either of those things would be much more expensive than simply buying me out.

For months, I've weighed the pros and cons of SU's offer.  If I take SU's deal, I'll have to turn myself into a full-blown distributor, without being able to reap the easy benefits of licensing my mark, which was my plan all along.

Since New York City is a four hour drive from campus, a licensing deal is the easiest way for me to profit and move the business along.  Keep in mind, I have a full-time job, and this was always meant to be a side business; an initial entrepreneurship endeavor.

After all, if I can't master a T-shirt company, what on earth can I possibly accomplish as an entrepreneur?  My thinking is not much, which is downright depressing.

While I debate the school's less-than-compelling offer, I've been selling women's and children's clothing online and getting a few sales per month. Still, it's not as many as I could be selling if I could work with the university.  Plus, without an agreement from the school, I'm afraid to use the colors blue and orange, which would sell the shirts 100 times better (see LSU vs. Smack Apparel; it ruled colors in the school's favor).

I know getting the shirts in the bookstore is the key. And I know there's interest. The bookstore buyer told me she wants to carry Syracutie clothes, but I have to work out a deal with the university first.

And it's not budging.

I've tried local, non-university affiliated stores too, but they're all scared of the university. If they enrage SU, their profits will all but vanish. In the town of Syracuse, the school wields all the power.

Until I agree to cave to the university, I am being silenced to death.  I've sent at least a dozen emails and made numerous phone calls, all of which have been ignored by the school's lawyer. When I reach out to Dan now, he says he's unable to speak with me for legal reasons.

Another opportunity has presented itself, though.  I've received a verbal offer outside of the university for my trademark.  We've discussed a flat cost, plus a small life-time royalties percentage.  This certainly would be the easiest route to take, but then I would feel like I hadn't done any work, and hadn't really grown a business myself.

By now, I've received my beautiful, official, trademark certificate in the mail.  But it doesn't make me as happy as I thought it would because I am truly stumped about the future of my business.

Do I sell my company in its very early state and, in a sense, admit defeat? Do I give the university my trademark and become the sole licensor? Or do I hold strong and keep trying to sell Syracutie myself?

At this point I'm feeling pretty defeated.

*Names have been changed.
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Read the article at: Business Insider.