In 2006 two University of Alabama football fans formed a company named Houndstooth Mafia. The two say that Houndstooth Mafia refers to their group of friends that are also Alabama football fans or Alabama football fans in general.
After selling houndstooth pattern t-shirts with the phrase “Houndstooth Mafia” while tailgating, the company applied for a trademark for its mark (the rectangles behind the letters are houndstooth pattern) in 2006. The problem is that the University of Alabama says that the mark infringed on their common law right in the houndstooth pattern.
From 1958- 1984 Coach Paul “Bear” Bryant coached the University of Alabama’s football team. Coach Bear Bryant not only coached the University’s football team he won more football games than any other major college football coach, winning 320 games, six national championships, and thirteen conference championships. While he coached his teams to victory year after year he wore houndstooth pattern fedora. Due to Coach Bear’s success this houndstooth-patterned became associated with the University by the avid fans everywhere. Despite licensing the houndstooth pattern to Nike in 2006, the University failed to obtain a trademark for the pattern.
The University’s licensing company sent cease and desist letters that demanded the defendant’s stop selling their t-shirts and withdraw their trademark application, which the defendant’s ignored. The defendant’s mark was approved for publication for opposition, which gives third parties the opportunity to oppose marks if that party would be damaged by the registration of the mark. Once the defendant’s mark was published, the University quickly opposed the registration of the mark with the Trademark Trial and Appeal Board alleging that it and its associated goods were likely to cause confusion, mistake and deception with the University.
The Trademark Trial And Appeal Board found that while a houndstooth fedora is associated with Coach Bryant and the University’s fans have an affection for the houndstooth pattern because of its use on Coach Bryant’s fedora, the University failed to introduce evidence showing that the Houndstooth Pattern functions as a source or sponsorship indicator for products sold or licensed by the University. It further found that because the defendant’s did not use Coach Bryant’s likeness or the University’s name or trademarked styled ‘A’ the mark was neither unmistakably associated with Coach Bryant or the University, nor pointed uniquely to them. For this reason the Board found that the defendant’s mark did not falsely suggest a connection with the University.
Well we all know that Alabama is not one to take a loss lying down. The University appealed the decision to the District Court of Alabama. It was here that the two parties reached a consent judgment assigning the defendant’s trademark registration to the University.
The court entered an order vacating the Trademark Trial And Appeal Board’s order causing the University to be victorious, Roll Tide.
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