Monitoring and enforcing trademark rights is an important task for IP managers in all types of organizations. The University of Texas is notoriously vigilant about this, and garners a lot of attention when the intellectual property at issue is the trademark tower at the Austin campus.
In the most recent filing, the facts alleged in the case are simple enough:
- The UT has a variety of trademark applications and registrations depicting the tower filed before the U.S. Patent and Trademark Office as well as and State Registrations (See graphic above).
- In 2010, as part of its business (“Tower Express Car Wash”) the defendant erected a replica of the UT Tower (See photo below) and used a representation of it in its logo (See leading graphic).
- Defendant continues to use the University’s marks.
The UT, like most institutions, has registered and common law rights on logos and other identifiers of the University and relies on these intellectual properties as assets, from attracting and retaining prospective and current students and faculty, to maintaining a link with the alumni network. Consequently, the UT’s complaint argues that the continued unauthorized use of the UT Tower replica and Logo is likely to cause confusion and to portray a false affiliation, sponsorship relationship, or association of the Defendant’s business with the University. The unauthorized use will, as it is alleged in the complaint, dilute the distinctiveness of the University’s Tower marks.
Some observers might take this infringement lightly, and see only humor in the deceptive association of the marks. However, the UT is obligated to enforce its IP rights in their totality, not on a case-by-case exceptional basis, thus upholding the value of the licensing business for both the UT and its licensees.
This type of lawsuit seems to fall exactly within the purpose of Trademark Law, as explained by the Supreme Court in Qualitex v. Jacobson Products:
“In principle, trademark law, by preventing others from copying a source-identifying mark, “reduce[s] the customer’s costs of shopping and making purchasing decisions,”[McCarthy on Trademarks…] for it quickly and easily assures a potential customer that this item – the item with this mark – is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past. At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation related rewards associated with a desirable product.”
The case was filed last Wednesday, so we shall have to wait for developments. The alleged infringement, however, seems clear from the Supreme Court’s perspective.
Case information: Board of Regents the University of Texas System v. Tower Car Wash Inc., 1:11-cv-00125-LY, U.S. District Court, Western District of Texas.
In federal court yesterday, famous artist, photographer, and director 
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