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Will the Trademark HAVOC still live at VCU?

Monday, April 27th, 2015

By now, you probably heard of the potential dispute between VCU and the University of Texas over the HAVOC trademark. How will it get resolved?

My guess is Texas will agree to not use the trademarks HORNS HAVOC and HOUSE OF HAVOC.

On April 20, I spoke to Pamela D. Lepley, who is vice president for university relations at VCU. While she declined to give a forecast, she said the schools are in “good collaborative talks.”

“Havoc” is a term coined by Coach Shaka Smart when he was introduced at VCU in 2009. It describes his heavy use of full-court press on defense.

Just a day after Smart was introduced at Texas, that school filed applications to federally register the trademarks HORNS HAVOC and HOUSE OF HAVOC.

As of this writing, Texas has not abandoned those applications, but it hasn’t started using those trademarks either. The Trademark Office website also does not indicate that VCU has made any recent filings for HAVOC.

It appears VCU will stick with the HAVOC brand. The new VCU coach, Will Wade, proclaimed at his introductory press conference that “Havoc still lives here!” HAVOC merchandise remains on sale at VCU.

But, in case Texas and VCU decide to fight, here’s how things might shake out:

Who would win this fight? Probably VCU. When you have a dispute between two confusingly similar trademarks, generally speaking the older mark wins. VCU has used HAVOC for several years.

But isn’t this Smart’s brand to take with him? Almost certainly not.

VCU registered the HAVOC trademark, listing itself as owner, with the Virginia State Corporation Commission in 2012. Texas filed its registration applications in the name of the University of Texas, not Smart.

That makes sense because a trademark generally is owned by the company that produces the goods or services being branded, even if a key employee was the driving force in building the brand.

Also, trademarks are registered for specific goods or services. VCU registered the HAVOC trademark for clothing and for sports entertainment services. Texas applied to register its trademarks for the same things. Those goods and services are provided by the schools not Smart personally.

Thus, while a sports announcer might speak of Smart’s “trademark” style of basketball, you don’t get a trademark registration for a playing style. You generally get it for things people buy, like T-shirts and tickets to basketball games.

Also, I reviewed Smart’s 2012 VCU contract. Nothing in it that makes him the owner of the HAVOC trademark rather than VCU.

But aren’t VCU’s and Texas’s Trademarks Sufficiently Different? Probably not, but this is Texas’s best argument.

In trademark law, the question is whether two marks are “confusingly similar.” Would Texas’s use of HORNS HAVOC and HOUSE OF HAVOC confuse basketball fans as to whether the two programs are the same or related?

That’s a tough call. Adding the word HORNS might suggest the Longhorns of Texas, although the Ram mascot of VCU has horns too.

Most sports fans would assume that the brand just traveled with Smart as his style of play. Yet, Smart doesn’t own the HAVOC trademark, and it doesn’t cover a style of play, so that would be an interesting issue for court to consider.

Texas probably would get snagged by its own trademark practices. Certainly it does not tolerate other teams mimicking its LONGHORNS team name and trademark. Trademark Office records show that in 2014 alone Texas sued to block three applications that included HORNS. VCU could use that to make Texas look hypocritical if it tried to argue that the Texas HAVOC trademarks are sufficiently different.

Does it make a difference that VCU and Texas are far apart? Probably not.

For some reason, VCU didn’t register its HAVOC trademark federally but, instead registered it in Virginia. VCU declined to comment on why it did so.

My guess is VCU wanted to save money. State trademark registration is cheaper and quicker than federal. But federal registration is far stronger. Perhaps VCU was penny wise and pound foolish.

Nevertheless, VCU has a strong argument that it’s “common law” trademark rights are nationwide. VCU plays and its games are televised all over the country.

In our conversation, Lepley confirmed that VCU considers its HAVOC mark to be a national brand.

The 2016 Final Four will be played in Houston. Wouldn’t it be interesting if VCU and Texas made it to the Final Four?

How would the fight go down? It could occur in the U.S. Patent and Trademark Office or in federal court or both.

If Texas’s federal trademark registration applications survive initial review, VCU could oppose them in administrative litigation in the Trademark Office.

Texas’s applications might not survive initial review. There is a prior pending federal trademark registration application for the trademark SON OF HAVOC that claims clothing items, entertainment services and sporting activities. That might block Texas’s registration efforts.

But stopping Texas from registering the HAVOC trademarks would not stop Texas from using them. Only a regular court can do that, with an injunction.

Texas and VCU also could fight in a federal court. Each school would prefer to fight on its home legal court but might have a hard time getting jurisdiction over the other school in its home court.

What will happen? Almost certainly VCU and Texas will work this out, to avoid embarrassment.

Also, fighting over this issue could create uncomfortable questions for both parties. In a quick search, I found three AAU basketball clubs (youth basketball) around the country using the name HAVOC. One is in Houston, Texas – the HOUSTON HAVOC.

That should make both sides uncomfortable. While it might favor Texas to point out that other basketball teams, at least on the youth level, have used the name HAVOC, Texas won’t like the fact that there is an AAU team in its home state using the HAVOC name.

For now, the eyes of the sports world are on Texas.

Published on April 27, 2015

by John B. Farmer

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