Background
In July 2025, Oregon-based Columbia Sportswear sued Columbia University in federal court in Portland, alleging the Ivy League university breached a June 2023 trademark coexistence agreement and infringed Columbia Sportswear’s registered trademarks. The coexistence agreement was negotiated after the university sought to register the “COLUMBIA” mark for apparel in 48 countries. Under the deal, the university was permitted to use “Columbia” on apparel and accessories, but only in conjunction with specific “University Indicia” — identifiers such as the word “University,” the university’s shield or crown logo, the lion mascot, the founding year “1754,” or references to specific schools like “Columbia Law.”
Columbia Sportswear alleges the university violated the agreement by selling merchandise bearing bare “COLUMBIA” branding without the required distinguishing identifiers, sometimes in a shade of blue similar to Columbia Sportswear’s signature color. The university moved to dismiss for lack of personal jurisdiction and, alternatively, to transfer the case to the Southern District of New York.
The Court’s Holding
The court denied both motions, keeping the case in Oregon. On personal jurisdiction, the court found sufficient contacts between the university and Oregon to support specific jurisdiction in a trademark case — the university’s nationwide sale of branded apparel, including sales accessible to Oregon consumers, and the negotiation of the coexistence agreement with an Oregon-headquartered company, established the required minimum contacts.
On transfer, the court rejected the university’s argument that the Southern District of New York would be a more convenient forum. The case centers on a coexistence agreement negotiated with an Oregon company to protect an Oregon company’s trademark rights, and the alleged harm — consumer confusion — would be felt significantly in Columbia Sportswear’s home market.
Key Takeaways
- Trademark coexistence agreements can create jurisdictional ties: by negotiating a deal with an Oregon company specifically to address trademark confusion risks, the university established contacts with Oregon sufficient for personal jurisdiction in a breach-of-agreement lawsuit.
- The case highlights the growing risk of coexistence agreement litigation. These agreements — often seen as practical, low-cost alternatives to protracted trademark disputes — can themselves become the basis for significant litigation when one party allegedly exceeds the agreed-upon guardrails.
- This dispute illustrates the practical challenges of policing “branded identifiers” in coexistence agreements. When a party is permitted to use a mark only with specific visual identifiers, even subtle omissions (removing “University” or the shield logo) can trigger breach-of-agreement claims.
Why It Matters
The “Columbia v. Columbia” case has attracted significant attention in the trademark community because it involves two iconic American brands sharing the same name. The ruling means the university must now litigate in Oregon — Columbia Sportswear’s home turf — rather than in its preferred New York forum. For businesses negotiating coexistence agreements, the case serves as a cautionary tale about the enforceability of usage restrictions and the litigation risks that arise when those restrictions are allegedly violated. The merits of the trademark infringement and breach-of-contract claims remain to be decided.