Columbia v. Columbia: a trademark clash between education and apparel

At its core, the dispute between Columbia Sportswear and Columbia University is about how entities that coexist under a shared term must adhere to clearly defined boundaries, both contractually and in the marketplace, to avoid consumer confusion.

Columbia Sportswear has become a global leader in outdoor apparel and gear. Its branding centers around the word “Columbia,” a name that, through decades of consistent use and billions in sales, has come to signify quality outerwear in the minds of consumers. The company owns incontestable federal trademark rights in the COLUMBIA mark for apparel and related goods and has long invested in associating that mark with its distinctive blue color palette, product quality, and accessible pricing.

Meanwhile, Columbia University, established in 1754 and one of the most prominent academic institutions in the US, also uses the name “Columbia” across its institutional branding. Like many universities, it markets apparel as a means of promoting school pride and engaging students, alumni, and parents. Historically, both parties coexisted without issue, as the university’s use was confined to educational and affinity-based purposes, and the apparel channels between them were distinct enough to avoid conflict.

That changed in 2023 when Columbia University sought to register the COLUMBIA mark for apparel in 48 countries. Columbia Sportswear, understandably concerned about consumer confusion, negotiated a coexistence agreement. Under that agreement, the university was permitted to use the word “Columbia” on apparel and accessories, but only in conjunction with specific identifiers that would make clear the source of the merchandise. These identifiers, referred to as “University Indicia” in the agreement, included the word “University,” Columbia’s shield or crown, the lion mascot, the founding year “1754,” or references to specific schools such as “Columbia Law.”

The idea was straightforward: if the university used these visual or textual cues in conjunction with the word “Columbia,” then the risk of confusion with Columbia Sportswear would be substantially reduced. In exchange, Columbia Sportswear agreed not to oppose the university’s international filings or licensed merchandise sales that complied with the agreement.

However, in September 2024, Columbia Sportswear discovered that the university’s online bookstore was selling apparel that violated their agreement. Multiple items featured the word “Columbia” as a standalone mark, with no accompanying indicia. Compounding the problem, many items used Columbia Sportswear’s signature blue color, and some bore logos of athletic wear brands such as Nike and Champion, reasonably implying a co-branding relationship.

These raised concerns about potential consumer confusion: while a student might recognize the source of the product, an outside observer could easily mistake the garment for Columbia Sportswear merchandise. The risk is even greater when the item also features a Nike or Champion logo, which could imply a collaboration between those brands. Columbia Sportswear’s position is that these items threaten its carefully maintained brand identity and risk diminishing its goodwill in the marketplace.

Despite attempts to resolve the issue, Columbia University continued selling the merchandise. As a result, Columbia Sportswear filed suit for breach of contract, breach of the covenant of good faith and fair dealing, and trademark infringement under both the Lanham Act and Oregon common law.

This case offers several enduring lessons for intellectual property attorneys, particularly the importance of precision in coexistence agreements. It is not enough to generally permit use of a shared term; the agreement must clearly specify how and when the mark may be used, as well as any limitations that apply. In this case, the inclusion of a detailed list of acceptable indicia is likely to make the alleged breach easier to demonstrate.

Coexistence also depends on discipline. A shared term like “Columbia” can only function in both parties’ branding if care is taken to keep the uses contextually distinct. Absent those guardrails, the risk of confusion grows significantly. This is particularly true where both parties operate in overlapping product categories, such as apparel.

Finally, this dispute highlights the importance of client education as a fundamental part of a trademark attorney’s role. Drafting the agreement is only the beginning; counsel must also ensure that the client fully understands the agreement’s permissions and restrictions, as well as how to apply them in practice. Effective coexistence requires more than legal precision; it depends on consistent and informed execution.

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