University of Texas settles trademark dispute with t-shirt maker
In October 2013, the University of Texas announced that it had reached a settlement in a lawsuit that it had filed against a t-shirt maker that alleged that the manufacturer’s t-shirts infringed on the school’s trademark. The details of the case demonstrate what a person needs to prove to prevail in a trademark infringement suit.
University alleged trademark infringement
The University of Texas brought a trademark infringement suit against a t-shirt manufacturer based in the U.K. for making t-shirts featuring hands making horn shapes, which the school called a UT hand signal meant to resemble a longhorn, the school’s mascot. The University of Texas claimed that the school had acquired the common law trademark for the “Hook ’em” hand signal because students had been using it to cheer for the team since 1955. The school has also registered several other related trademarks involving the hand signal, including the term “Hook ’em Horns.”
The t-shirt maker was manufacturing apparel aimed at heavy metal music fans, who often use a similar hand gesture. The University of Texas’ suit argued that the continued sales of the t-shirts would dilute the strength of the school’s trademark.
As part of the settlement that the parties reached, the man agreed to withdraw two applications for trademarks that he had submitted to the U.S. Patent and Trademark Office, but did not admit any wrongdoing.
Prevailing in a trademark infringement suit
When an injured party believes its mark is being infringed by an alleged infringer, the injured party may choose to file suit against the alleged infringer. In order to recover for trademark infringement, the injured party must show that:
- It has a valid mark that is entitled to protection,
- The alleged infringer has used the mark or something similar to it without the injured party’s permission, and
- The alleged infringer’s use is likely to cause confusion as to the source of the goods and/or services or in regard to the association and/or sponsorship between the injured party and the alleged infringer.
If a party successfully proves all these elements, it may obtain an injunction barring the infringer from further infringement, as well as recover damages for losses suffered from the infringement and costs of litigation.
Speak with an attorney
In the image-oriented society of the U.S., a trademark is often the essence of a company’s identity. Protecting a company’s brand is critical to the continued success of the business. When others try to capitalize on a company’s trademark, it can harm the business’ reputation. If you have questions about protecting a trademark, speak with an experienced trademark litigation attorney who can advise you how to take legal action against a trademark infringer.