Donuts and college football – two of America’s great passions. That’s why Angel Seng, the owner of Donut Taco Palace 1 in Austin, Texas, thought to combine the two and begin selling donuts shaped like the “hook ‘em horns” hand sign popular among University of Texas football fans. She wasn’t planning to run into any legal trouble however. That lasted until University of Texas trademark lawyers recently sent her a cease-and-desist letter stating Sang’s use of “Longhorn Donut” and the hook ‘em horns hand sign infringed the University of Texas’ trademarks.
This conflict has been several years in the making as Seng took two years to perfect the technique to create the complicated donut shape after a customer asked if she could make such a donut. Once she had perfected the process, she began selling the “Longhorn” donuts for $2 apiece. But when UT’s branding office found out about the unauthorized use of Longhorn name and the hand sign, it quickly went into brand protection mode, which is not uncommon for large organizations with established brands.
As a brand owner and trademark registrant, it’s important to protect and police your brand. If you let unauthorized use of brand go, it can reduce your brand equity or even genericize your mark. A couple examples of trademark genericization come to mind, Kleenex and Xerox. When people refer to facial tissue, they often use the brand name Kleenex, just as people making a copy will often refer to it as a Xerox. When a brand is the first or the dominant player in a market, it’s brand name can often become the word for the product or the action. Google is another brand name that fits this description. When people talk about searching on the internet, they often use the term google. Not all use can be policed however, like when people use the brand name in regular speech. But if someone is using the mark commercially, it’s wise to take action.
That is why University of Texas actively enforces its trademarks and even goes after small business owners like Seng when its brand is threatened. UT has several trademark registrations on its logos, names, and even on the “hook ‘em horns” hand sign. If it allows unauthorized use of its marks, its trademark rights can erode over time.
Seng might try to argue that her donuts aren’t likely to cause any consumer confusion, the key to trademark law. She might contend that consumers are not likely to believe there is any real association between her donuts and the University, but with the built up equity in the University of Texas brand, it’s probably best not to mess with the University of Texas’ brand.