from the donut-do-that-again dept
While the University of Texas is no stranger to being a trademark bully, and colleges in general have become overtly maximalist in intellectual property protectionism, it can still be stunning to see the lengths to which a school will go. The latest trademark dispute concerning UT involves donuts shaped in the ‘hook ’em horns’ gesture, because apparently the school is now in the pastry business. Recently, the owner of Donut Taco Palace 1, Angel Seng, received a threat letter from the university insisting that she stop making donuts that look like horned-hands.
The letter, dated July 19 and sent from law firm Pirkey Barber, which represents the University of Texas in trademark and unfair competition matters, included a photo of Seng’s Longhorn Donut and an explanation that it violates UT’s trademarked “LONGHORN Marks,”which include the words “longhorn” and “longhorns” and the Hook ‘Em hand symbol.
“While the University appreciates Donut Taco Palace’s enthusiasm, UT is understandably concerned about your use of the LONGHORN Marks in this manner,” the letter said. “We suspect that you were not aware of the University’s trademark rights when you started selling ‘Longhorn Donuts.’ We trust that, now that these rights have been brought to your attention, you will take the appropriate steps to discontinue sales of the ‘Longhorn Donuts’ and refrain from any other uses of the University’s marks.”
And here is a picture of the donuts in question.
Now, while the UT website page that specifically discusses licensing arrangements in the most non-specific manner possible doesn’t detail which areas of commerce it has trademarks on for the hook ’em hand gesture, nor does the letter that Seng received, UT representatives have managed to trot out the tired old excuse for why the school must behave this way.
Craig Westemeier, senior associate athletics director for trademark licensing at the University of Texas, said in an email that the university receives tips on trademark violations from a variety of sources including alums, fans, staff, faculty, students and anonymous emails. He said the UT brand must be monitored and protected in order to maintain its integrity and value.
“It is an integral part of the trademark law that we protect to regulate the use of and educate the public regarding our rights in these marks. That is our responsibility as a trademark owner,” he said. “We cannot permit the use of our trademarks without providing approval, review and quality control of the item being produced. An inferior product or one that is not properly vetted could hurt the University’s reputation.”
As we’ve pointed out over and over again, the threat-hammer is not the only way someone can go about protecting its trademark from dilution. With that even being said, there are real questions as to the validity of UT’s claim. Questions such as: does the school have a trademark on the hand gesture in the area of baked foodstuffs, can it demonstrate any real or potential customer confusion as to whether or not the school was involved in the creation of these donuts, and exactly how often has the school gotten into trademark disputes with heavy metal rock fans and satanists that famously use the same hand gesture?
Sadly, these questions will go unanswered, because trademark bullying works.
Inside Donut Taco Palace, where pale pink walls are covered with photos of menu items that include a doughnut sandwich (a cinnamon roll, cut in half, toasted and stacked with cheese, egg and sausage) and yes, a doughnut taco, there’s a blank space where the Longhorn Donut used to be. Seng said fighting the university would probably become a doughnut vs. Goliath proposition that she can’t afford, so for now she’s re-naming it and purposely selling fewer.
“We’ll change the name and let it go,” she said. “It wastes time to fight back. It’s not worth it.”
Way to hook ’em, Longhorns…