The University of Texas has recorded a partial victory in a legal dispute with a company that used its registered trademark – a longhorn steer in silhouette.
Specifically, a magistrate judge recommended that a district judge deny, in part, a summary judgment motion brought by the company, KST Electric, which UT accused of violating state and federal trademark law by infringing upon and diluting its trademark.
The court sided with the defendant on the issue of federal trademark dilution. KST successfully argued that UT hadn’t shown the requisite fame.
KST introduced an expert, who conducted a national survey that showed that only 5.8 percent of respondents associated the longhorn logo with UT alone, and only 21.1 percent of Texas respondents made that determination.
The current standard requires a mark to be “widely recognized by the general consuming public of the United States,” wrote the court citing 15 U.S.C. § 1125(c)(2)(A).
The court dismissed a UT study conducted solely in the metropolitan Austin area.
UT had submitted circumstantial evidence of the logo’s fame based on the idea that UT “has permeated the national consciousness primarily through the success of its football program.”
KST was started by Kenneth and Suanna Tumlinson in 1994. The couple were avid fans of UT athletics. In 1998, KST designed what the Court referred to as “the Longhorn Lightning Bolt Logo.” The logo’s design consisted of a longhorn silhouette with a “K” on the left cheek area of the longhorn, an “S” on the right cheek area, a “lightening bolt T” in the face of the silhouette, and the words “ELECTRIC, LTD.” in the space between the horns.
In March 2002, when UT asserts it learned of the LLB Logo, UT asked KST to cease and desist using that logo. KST refused. In December 2006, UT filed suit. Shortly thereafter, KST moved for summary judgment on a number of affirmative defenses and on the merits of some of UT’s claims.
KST has filed two motions for summary judgment. The first addresses several affirmative defenses KST has raised and seeks summary judgment on these defenses: (1) laches; (2) estoppel by laches; and (3) the statute of limitations. The court denied these motions, finding that there was no “unnecessary delay” on UT’s part. “UT asserted its rights weeks, if not days, after the date it contends it discovered the LLB logo,” wrote the court.
Then, the court turned to a separately filed motion by KST, seeking summary judgment on UT’s federal trademark infringement, federal unfair competition, and federal dilution claims.
The magistrate judge summarized that “the critical question is whether KST’s logos suggest that it is in some way affiliated with or endorsed by UT.” On this point, the court found that UT “has established a material fact issue as to the likelihood of confusion element of its federal trademark infringement and unfair competition causes of action, and thus it denied KST’s motion for summary judgment on the claims of federal trademark infringement, federal unfair competition.
Where KST did get traction was on its motion for summary judgment on UT’s federal dilution claim.
Under the Trademark Dilution Revision Act, which was signed into law in 2006, “the owner of a famous mark . . . shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury. 15 U.S.C. § 1125(c)(1).”
To prove its claim, wrote the court, UT must submit sufficient evidence to demonstrate that there is at least a triable issue under the TDRA that the LSL (logo) is “famous.”
“In its response, UT offers evidence of famousness that at first blush appears impressive. Upon closer scrutiny, however, it is apparent that the evidence submitted is evidence of ‘niche’ fame, which is a category of fame to which the TDRA explicitly does not apply. To summarize, UT’s response contains evidence that UT football games are regularly nationally televised on ABC and ESPN, and the LSL is prominently featured as UT’s logo during these broadcasts.” It went on to highlight other national television appearance, such as the 2006 Bowl Championship Series Rose Bowl national championship game, which was the highest rated game in the eight-year history of the BCS and was also the highest rated college football game since 1987.
“The central problem for UT is that its circumstantial evidence is largely evidence of niche market fame. Reading through the evidence, it is not at all clear that if one is not a college football fan (or, to a much lesser extent, college baseball or basketball fan) would recognize the LSL as being associated with UT, as all of the evidence relates to the use of the logo in sporting events. The Court is well aware that NCAA college football is a popular sport — the Court counts itself as a more than casual fan of Saturday afternoon football in the Fall — but this hardly equals a presence with the general consuming public (nearly the entire population of the United States). Simply because UT athletics have achieved a level of national prominence does not necessarily mean that the longhorn logo is so ubiquitous and well-known to stand toe-to-toe with Buick or KODAK. Moseley, 537 U.S. at 431 (2003) (citing H.R.Rep. No. 104-374, at 3 (1995)).
“One of the major purposes of the TDRA was to restrict dilution causes of action to those few truly famous marks like Budweiser beer, see Anheuser-Busch, Inc. v. Andy’s Sportswear, Inc., 1996 U.S. Dist. LEXIS 15583, 1996 WL 657219, No. C-96-2783 THE, (N.D. Cal. Aug. 28, 1996).
“Because UT’s evidence fails to demonstrate the extremely high level of recognition necessary to show ‘fame’ under the TDRA, summary judgment is appropriate on this claim,” concluded the magistrate judge.
The Board Of Regents, The University Of Texas System v. KST Electric, LTD.; W.D.Tex.; A-06-CA-950 LY, 2008 U.S. Dist. LEXIS 8883; 2/5/08
Attorneys (for plaintiffs) Louis T. Pirkey, Susan J. Hightower, William G. Barber, LEAD ATTORNEYS, Pirkey Barber LLP, Austin, TX. (for defendant) Donald Wayne Holcomb, LEAD ATTORNEY, Knolle & Holcomb, Austin, TX; Raymond M. Galasso, LEAD ATTORNEY, Galasso and Associates LP, Austin, TX.