VIRGINIA TECH SUES HOKIE REAL ESTATE, INC.FOR USE OF THE TRADEMARK HOKIE
By Jane Tucker, Vandeventer Black LLP
May 4, 2011
Do you have the right to use your college’s nickname in the name of your business? Virginia Tech says no in its lawsuit against Hokie Real Estate, Inc., a real estate brokerage firm in Blacksburg, Virginia owned and operated by a Virginia Tech alumnus. In its lawsuit, Virginia Tech claims that the use of the word “Hokie” is likely to confuse the public into believing that the real estate brokerage company is affiliated with the university. Virginia Tech also alleges that because its mark is famous, no one other than Virginia Tech and its licensees should be able to use that mark, even if there is no likelihood of confusion.
The first round in the litigation has been completed with the U. S. District Court for the Western District of Virginia denying Virginia Tech’s motion for a preliminary injunction. In doing so the Court rejected Virginia Tech’s arguments that there would be a likelihood of confusion on the part of the public as to the affiliation between the university and Hokie Real Estate. The Court also rejected Virginia Tech’s argument that the use of the name Hokie Real Estate dilutes and/or weakens the university’s famous mark. In support of its ruling on this argument, the Court found that the existence of a number of restaurants and other businesses using the word “Hokie” in their names in Blacksburg without permission from Virginia Tech undercut Virginia Tech’s argument.
The lawsuit is not over, however, and Virginia Tech will still have the opportunity at a later date to present evidence/arguments to support its position, as will Hokie Real Estate. Nevertheless, the ruling by the Court on the preliminary injunction is an indication of the Court’s position as to Virginia Tech’s arguments.
Other schools should take note from this opinion that they may not be able to control all uses of their logos, nicknames and mascots. Nevertheless, schools should register their trademarks, maintain control over the licensing program and diligently monitor and authorize all other uses of their logos, nicknames and mascots.
For all you Hokies out there, at least at this stage in litigation, it looks like you may continue to use the name “Hokie” commercially for products and services as long as the products and/or services you are selling are not those being offered by Virginia Tech.
These articles are meant to bring awareness to the topic and are not intended to be used as legal advice. If you have questions about any of the articles or any other related matters, please see the contact information located at the end of each individual article.
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