When Matthew Krol, board president for the new John Adams High School in Colorado, opened the trademark demand letter from an attorney in Sacramento, he was baffled.
The letter from a lawyer representing the John Adams Academy in Roseville directed the Littleton, Colo., high school to choose another name or face the possibility of legal action.
“I just couldn’t believe it. It would be different if we had a name that was geographic, like Grand Canyon School,” said Krol. “We’re talking about a president of the United States and a Founding Father of our country.
“You look around, and a lot of schools have the name of a Founding Father,” he said, noting that he found nearly two dozen schools named after the second U.S. president in an Internet search. “I just can’t see how somebody could trademark a president of the United States.”
Krol said he has worked with founders for most of the last three years to help organize John Adams High School, intended to enroll about 1,500 students. The campus won approval June 2 from the Douglas County School District to begin operation in August 2016.
The lawyer’s letter, signed by Sacramento intellectual property attorney Mark R. Leonard, arrived in Krol’s mailbox about 10 days before the district’s approval. The letter advised that the academy in Roseville has two federal trademark registrations for “John Adams Academy” and plans to protect its intellectual property.
The Roseville K-12 charter school emphasizes “classical leadership education” to create future leaders and statesmen and typically has a wait list, according to its website. The site reports that the school is in contract to buy the 50,000-square-foot building that housed the now-defunct Heald College. The building will be used for grades 7-12, the website says. The academy is planning to build a second academy in Lincoln.
Leonard said he sent the Colorado school a demand letter because some parents who contacted the Roseville academy mistakenly thought it was the Colorado high school. “Under trademark law, that’s called actual confusion,” he said. He said he did not have the exact number of parents who were confused.
Leonard’s letter urges the Colorado school to stop using the name and “adopt a new name that does not include ‘John Adams’ or any confusingly similar names.” His client, he wrote, “reserves its right to seek injunctive relief, damages and all other available relief if such resolution is not forthcoming.”
Leonard said he could not address his client’s motivation in registering a trademark. The school’s headmaster, Shane Schulthies, did not respond to requests for an interview. But, Leonard said, establishing trademarks is usually a good idea. He said he’s helped more than a half dozen schools in California do so.
“You want to have it, but you hope you don’t ever need it,” he said. “You want to try to avoid confusion among parents. That can become particularly important if another school with a similar name has negative publicity.” That issue has grown in importance, he said, as more businesses and schools rely on the Internet.
Most of the nearly two dozen John Adams school namesakes that Krol found online have been using the name for years. Trademark attorneys say schools anywhere in the country that have been using their names longer than the school holding the trademark registration, known as common-law rights, can continue doing so.
John P. Costello, a patent attorney in Sacramento who also specializes in copyright, trademark and intellectual property issues, said a school hoping that a trademark will prevent any name confusion might do well to first choose a distinctive name. A trademark owner must distinguish the name “John Adams” not just as a former president but also as defining an educational institution in the minds of the public, much like George Washington University has done, he said.
“It’s not a real strong mark because it’s somebody’s name and there might be a whole slew of schools who use the name ‘John Adams,’ ” Costello said. “Names and surnames can become trademarks. But you have to acquire secondary meaning over time, usually through substantial advertising or acquired distinctiveness. You have to establish a meaning apart from its use as a surname. That could be a tough row to hoe, especially if there are other ‘John Adams’ schools out there.”
Colorado’s Krol said his group doesn’t have the money to devote to a trademark challenge.
“That’s crazy to even fathom,” Krol said. “It’s not something we can fight. We’d rather invest the money in schools and education.”