Marking Harvard Territory

He thwarts efforts of foreign schools to illegally operate under Harvard’s name. He rejects requests to produce Harvard cigarettes and Harvard soap. As Director of the Harvard Trademark Program, Rick Calixto wages a daily war against entrepreneurs around the world who try to violate Harvard’s right to its trademark name and insignia.

Just the other week, Calixto discovered that someone posing as a Harvard official tricked one of China’s largest schools, the Shaanxi International Trade College, into believing that Harvard had agreed to build a branch of the Cambridge university in China.

Some students on Harvard’s own campus believed the farce, and news outlets such as China’s state-owned Xinhua News Agency reported on the agreement. According to the Xinhua article, the Shaanxi International Trade College believed that Harvard would send teaching materials, equipment, teachers, and students through an exchange program with the Chinese school.

Responding to this fiasco, Calixto quickly contacted various Harvard agencies as well as China’s trademark council and authorities to deal with the matter.

In another case that lasted two years, responding to Calixto’s complaints, Indonesian authorities threatened the president of Harvard International University in Indonesia with house arrest until he agreed to cease using Harvard’s name.

It’s all in a days work for Calixto, whose job is to correct such blatant misuses of the Harvard trademark—first by approaching those directly involved and, if unsuccessful, through more severe legal measures.

Harvard’s trademark program, which has been around in one form or another since 1985, only began its global monitoring of the trademark a decade ago—realizing that the protection of the Harvard trademark was necessary. According to trademark law, institutions must protect and police trademarks if they wish to retain their rights.

“We are unique in that we are likely the most infringed college university trademark around the world,” Calixto says.

TIGHT-FISTED POLICY

When Calixto is not protecting the Harvard trademark from illegal use, he is responding to legitimate requests from companies wishing to use Harvard’s name and insignia.

Currently, Calixto estimates that there are 140 licenses in the U.S. and many more in Japan, China, and Korea—places where merchandise with the Harvard name and insignia are very popular.

Merchandise approved by Harvard is subject to a 7.5 percent royalties charge on the wholesale price of the goods. The proceeds from these royalties, which amount to approximately $400,000 after subtracting out administrative costs, are then donated to the undergraduate financial aid program.

But even when companies take all the correct steps, getting the rights to use the name of America’s oldest college proves difficult.

“Harvard runs the most conservative university and college licensing office,” Calixto says.

Certain items—including food, weapons, computers, and medicines—are automatically denied, according to Calixto, who says he has rejected requests for novelty items such as Harvard beer, Harvard cigarettes, and Harvard cookies.

In choosing what items to approve, “I think of it as a dartboard,” Calixto says. “If it is something related to the mission of [Harvard University], it is at the center.”

For example, Calixto notes that items such as cigarettes oppose the mission of the Harvard School of Public Health.

And Calixto emphasizes that his role as overseer of the Harvard trademark extends much further than halting efforts to mass-produce Harvard perfume.

In line with Harvard’s focus on mission-related licensing, it does not grant approval to any educational institution that wants to use the Harvard name unless established by the university itself.

“Harvard has invested 350-plus years in maintaining its energy and name and people will use it in order to mislead others to believe they are affiliated with Harvard,” both deceitfully and innocently, Calixto says.

Last year in the U.S. alone the Trademark Department was able to stop the use of the Harvard name at five schools. But while Calixto’s office asks violating schools to discontinue the use of the Harvard name, its intent is not to shut down these schools.

CRACKING DOWN

Calixto works from his office in Harvard Square’s Holyoke Center but keeps abreast of trademark activities worldwide.

For one, Calixto pays an outside watch-dog firm, the London-based Trademarks Directory Service, to monitor the trademark applications in almost every country. When a company attempts to file a trademark application with the name Harvard anywhere in the world, Calixto says he is alerted almost immediately.

But in numerous cases where perpetrators use Harvard’s name without permission, Calixto says he often finds out from alumni and concerned citizens.

In his search for trademark violations, Calixto explains that not every country poses the same level of concern.

“We mostly don’t have to worry about Europe and Japan... though we do have infringement there. They are more in tune with the understanding of intellectual property,” Calixto says.

Calixto contrasts this with regions in Asia and Southeast Asia, where, he says, a large amount of trademark infringement cases originate.

When Calixto does discover a violation, he starts off with a polite request to stop using Harvard’s name, which often proves effective, he notes. If unsuccessful, Calixto then issues a cease and desist letter warning of a lawsuit—also very effective, he says.

Unresponsive companies are usually slapped with a lawsuit from the university, though Calixto says he does not recklessly sue every company that violates the trademark rights.

“We typically won’t go after them unless our associate in [the specific] country specifically says that if we don’t...it will dilute our trademark rights,” Calixto says.

When lawsuits do occur, they can be expensive. Some cost upwards of a $100,000 in the United Sates, though lawsuits in foreign countries cost considerably less.

FUTURE BUSINESS

Though Calixto has not always been chasing trademark violators, he has had a long relationship with the University. After graduating from Florida International University, he received two masters degrees, one from the Harvard Divinity School and one from the Harvard Extension School.

A Cuban native, Calixto joined the Harvard Trademark Program in the mid-1990s as assistant to the director and in 1997, was promoted to the directorship.

“I really love my job,” Calixto says, noting that he finds his line of work exciting and stimulating.

During his years in the trademark office, Calixto says he has seen a constant volume of trademark violations despite his watchdog eyes.

“Like a restaurant, not everybody goes all the time but its never empty. Cases just show up,” Calixto says.

However, he added that “the aggressive stance the university has been taking worldwide to prevent the unauthorized use of the Harvard name, especially in the area of education, has significantly strengthened the University’s rights.”

The Harvard Trademark Program will expand its four-person staff when it moves to its new office July 1.