Iowa State will no longer be an “odd” institution out in a million-dollar industry of university trademark license management and marketing.

The university recently decided to transfer its trademark licensing program from the ISU Research Foundation to the Office of the Vice President for Business and Finance, and by the end of the semester it will have contracted with an independent firm to coordinate Iowa State’s trademark uses and marketing.

With this new decision, the university is now the last institution in the Big 12 Conference to work with an outside agency to help it manage, promote and sell its marks.

“We were sort of odd,” said Tahira Hira, assistant to ISU President Gregory Geoffroy for external relations and executive administration.

“I think it was long overdue.”

The recommendation for the reorganization came from a committee of campus representatives who are involved with ISU trademarks.

Hira was chairwoman of the committee, which was under a directive from Geoffroy to study the issue of outsourcing.

The committee was unanimous in its support of hiring a private trademark license management firm to perform some of the functions previously delegated to ISURF, Hira said.

“I don’t remember anyone saying it’s not a good decision,” she said.

Under the current structure, ISURF did not have adequate staff or marketing experience for it to be an important focus, university officials said.

“[ISURF] is not geared up to do marketing strategy,” said Warren Madden, vice president for business and finance, whose office now oversees ISU trademark licensing. “When we set up ISURF, trademark licensing and management was a small piece of multiple tasks we asked it to perform.”

As part of its responsibility to protect and manage the university’s intellectual property, ISURF also oversees university copyright and patents.

Because of this, Johnny Pickett, associate vice president for business and finance — who will oversee the ISURF trademark and licensing staff members moving to her office — said ISURF did not see marketing as core to its management of intellectual property.

ISURF’s executive and associate executive directors were unavailable for comment because they were out of the country on business.

However, Executive Director Kenneth Kirkland has made published statements stating he and ISURF are in favor of the decision.

“We [the university and ISURF] are not primarily a marketing organization,” Pickett said, adding that during the last dozen years, ISURF has been charged with the primary task of assessing the quality and appropriateness of marks.

The intended result of the reorganization is a more aggressive marketing campaign with a streamlined administrative process that will lead to increased revenue for the university.

Iowa State has earned $500,000 annually in trademark license royalties.

“We want to make sure we are not missing out on an opportunity to generate revenue,” Hira said. “Everybody else is doing it in a different way; it works, and it works better.”

Pickett said it was hard for the university to get quick response and turnaround to the commercial sector since it doesn’t have the administrative support and industry connections and influence that a large firm has.

“The industry is changing, and companies are wanting to streamline. If they’re easier to do business with because they have a big presence in the industry, then maybe they can do a better job of generating income from our trademark,” she said.

However, Madden and Pickett said, even with the outsourcing, Iowa State is not delegating its legal responsibilities or ownership of ISU marks to a yet-to-be-named firm.

“We still have to approve and administer local uses that are non-revenue generating. We will still do local enforcement,” Pickett said, adding that Iowa State will keep a campus trademark licensing advisory committee. “We are still responsible for protecting our own trademark; we are not delegating that to the firm. They will give us a menu of service and we will pick and choose.”

Madden said the university is still in the process of soliciting company proposals.

Bids were due by Thursday, and selection will be made by December.

He also said the reorganization will be seamless and transparent for the campus community.

“The various campus organizations who use university trademarks for non-revenue generating purposes will still have contact with the same people they’ve always talked to about using university trademarks for their group,” Madden said. “In fact, the reorganization should make things better for those on campus, as the people they deal with will be brought directly into the university enterprise.”

Under the new system, the athletic department, which is the largest campus entity to use ISU marks, will receive about 70 percent of revenues from trademark license royalties with the other 30 percent going to support university initiatives in a fund managed by Madden’s office. Madden said the fund will be used at the discretion of President Geoffroy, and will most likely be used to support programs and activities used to promote and market Iowa State, such as the marching band.

Recent enforcement taken on ISU trademarks:

• There are seven legal disputes the Iowa State University Research Foundation is involved with. It is opposing seven different federal filings for trademarks it said it believes infringe in some way on the university’s registered marks.
• In fiscal year 2004, 81 enforcement actions were taken on ISU trademarks.
• There is no data for FY 2003, as ISURF was understaffed and unable to sort through the information.
• In FY 2002, 45 enforcement actions were taken on ISU trademarks.
• On average, there are anywhere from 40 to 80 actions a year taken to enforce ISU trademarks.

Common services trademark and licensing companies perform:

• Register trademarks with the federal government
• Negotiate national and regional marketing packages with retailers such as Wal-Mart Stores Inc. and J.C. Penney Co. Inc.
• Enforce proper use of the marks and quality of products
• Pursue co-branded products (for example, a university mark and a Coca-Cola Company logo appearing on the same product)