Clash of the Columbias - Litigating Co-Existence Agreements

Columbia Sportswear also asked the University to avoid the exact shade of blue the outdoor brand uses.

What Went Wrong

In 2024, Columbia Sportswear noticed new merchandise being sold by the University that carried the lone word “COLUMBIA,” sometimes using shades of blue that are allegedly similar to Columbia Sportswear’s signature color. Columbia Sportswear then notified Columbia University of an alleged breach of the co-existence agreement. Some garments also featured third-party logos from Nike and Champion, purportedly raising the risk that shoppers would think Columbia Sportswear had teamed up with those competing apparel brands.

After failing to resolve the issues privately, Columbia Sportswear filed a complaint in federal court in Oregon on July 23, asserting that the University breached the 2023 agreement, leading to infringement upon Columbia Sportswear’s mark and risk of consumer confusion. Specifically, Columbia Sportswear is asserting that consumers may believe the brand is affiliated with the University or with Columbia Sportswear’s competitors.

Key Takeaways for Brand Owners, Think Long-Term

• Even a signed agreement is not self-enforcing. 
  A co-existence deal lowers the temperature (hopefully) but does not remove all risk. Active monitoring and cooperation remain essential. Well-drafted cooperation clauses are critical for keeping the parties working together and should anticipate that things may change over time.

• Clear guidelines reduce gray areas. 
  The more specific the parameters on color, placement, size, and types of goods, the easier it is to spot (and fix) an issue before it becomes a bigger problem.

• Internal safeguards prevent costly disputes. 
  Companies should train licensees, vendors, designers, and marketing teams on what the agreement allows and prohibits before they are made, and certainly before any product hits the shelves.

• Use swift communication. 
  If one side sees a possible violation, immediate dialogue can resolve misunderstandings and avoid litigation. Similar to a cooperation clause, well-drafted breach and cure provisions can save companies significantly on litigation avoidance.

Co-existence agreements can allow two well-known names to live peacefully in the same marketplace but only if each party maintains robust safeguards in its daily operations. The Columbia v. Columbia lawsuit shows how quickly things can unravel and escalate to a litigation. Trademark owners entering into co-existence agreements will want to be aware of these issues and understand the potential litigation risks where an entity steps outside of the lanes agreed to.

The Retail and Fashion Group at ArentFox Schiff will continue to monitor this case and provide updates as it develops. For companies or institutions that operate in the same geographical market as another entity using identical word marks, now is the time to dust off those old co-existence agreements and refresh recollections on the grants and limitations of the agreements and the overall risks of sharing a mark.

The case is Columbia Sportswear Company v. The Trustees of Columbia University in the City of New York, 3:25-cv-01299 (D. Or.).