Tuesday, October 24, 2017

Virginia Tech's "HOKIE" Service Mark Application Survives Challenge From U. Va. Grad

Opposer HOOS, an LLC founded by University of Virginia graduate James Creekmore, opposed the application of intrastate rival Virginia Tech to register the mark HOKIE for various educational and entertainment services, on the grounds of intentional misuse of the registration symbol, abandonment through naked licensing, and genericness. However, opposer stumbled over various evidentiary and procedural hurdles, and failed on all three claims. Hokie Objective Onomastics Society LLC v. Virginia Polytechnic Institute and State University, Opposition No. 91207895 (October 20, 2017) [not precedential] (Opinion by Judge Thomas W. Wellington).

Procedural/evidentiary issues: Opposer attempted to enter into evidence certain documents and testimony from a civil matter involving Applicant Virginia Tech and a third-party, but it failed to move for an order allowing same or to obtain applicant's consent, and so the Board excluded that evidence.

Opposer submitted via notice of reliance, certain documents produced by Virginia Tech during discovery, but it failed to follow the applicable rules. The documents were not printed publications or official records admissible under Rule 2.122(e), nor appropriate Internet materials. The document instead were e-mails, license agreements, and artwork, none of which are self-authenticating. Opposer sought to introduce the documents by way of the testimony of its own witness, Mr. Creekmore, but he could not authenticate them. Therefore the documents were excluded from the record.

Finally, Virginia Tech objected to Mr. Creekmore's testimony and related exhibits regarding the meaning of the word "Hokie." However, he did not conduct the underlying research and was not qualified as an expert on the etymology of the word. The Board did not strike the challenged testimony and exhibits, but accorded them whatever probative value the evidence merited.

Standing: According to Mr. Creekmore, opposer's "mission" is to educate the public as to the "proper and historical use" of the term "hokie," in order to demonstrate that the word is used by and available to the public, not just Virginia Tech. The Board, noting that a liberal standard applies to the issue of standing, found that opposer has a "real interest" in the proceeding in that it uses "Hokie" as part of its name in rendering its services, which "may be related to Applicant's 'educational research ... [and] conducting educational conferences' services." Because opposer has standing to bring its genericness claim, it also had the right to assert any other grounds for relief.

Misuse of R symbol: Improper use of the R symbol, if done with intent to deceive, may be a ground for denying registration of a mark. Continuing to use the R symbol after being notified of its misuse "raises serious questions as to the [user's] purpose and intent."

Here, Opposer HOOS failed to prove that Virginia Tech had the requisite intent to deceive the public. There was no dispute that VT's licensees continued to use the R symbol with the term HOKIE after VT was notified by opposer's law firm. However, Virginia Tech owned a registration for the plural HOKIES since 2000 and it saw no material difference between the two marks. Nonetheless it did take steps to correct the situation.

Given Applicant’s reasoning for using the registration symbol in the first place and its earnest attempts to prevent improper future use of the symbol, we do not find Applicant’s actions rise to the level of intending to deceive prospective purchasers or anyone else.

Naked Licensing: The evidence regarding purported naked licensing was found in one of the exhibits that the Board excluded. Mr. Creekmore's testimony regarding third-party uses of the term HOKIE that he had seen was of little probative value, and so the Board dismissed this claim.

Genericness: Opposer argued that HOKIE is generic not in the context of applicant's services, but rather that HOKIE is a generic term for anyone who supports Virginia Tech, and opposer may describe itself as a HOKIE in this generic sense. The record, however, did not show how the term "Hokie" is understood by the relevant consuming public in the context of educational and entertainment services. In short, the evidence did not establish that the consuming public uses the term HOKIE as a generic reference for those services. "Indeed, to the extent that any correlation may be drawn between 'Hokie' and the relevant genus of services, it is that HOKIE identifies Applicant as the source of the services."

And so the Board dismissed all three claims.

Read comments and post your comment here.

TTABlog comment: Mr. Creekmore is a lawyer and his firm represented opposer. HOOS is a one-man operation: Mr. Creekmore.

Text Copyright John L. Welch 2017.


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