A DOUGHNUT RUNS AFOUL OF UT TRADEMARK
Last fall, Angel Seng, owner of Donut Taco Palace 1 off U.S. 290 in Southwest Austin, gained thousands of new fans after a popular sports website told the world about her signature Longhorn Donut.
One look at the yeast-and-glaze concoction that resembles the “Hook ’em Horns” hand gesture and you can understand why fans gobble it up.
But the University of Texas has found some holes in Seng’s design.
Last month, Seng received a letter sent on behalf of the university citing a violation of trademark rights in relation to the Longhorn Donut and requesting that, when it comes to selling them, Seng yeast and desist.
“It’s not fair. It’s not right,” Seng said. “This I created by myself; I’m not copying from them. I’m supporting them.”
“It wasn’t very nice,” said her boyfriend, Fred Hart. “We felt kind of bullied.”
The letter, dated July 19 and sent from law firm Pirkey Barber, which represents the University of Texas in trademark and unfair competition matters, included a photo of Seng’s Longhorn Donut and an explanation that it violates UT’s trademarked “LONGHORN Marks,” which include the words “longhorn” and “longhorns” and the “Hook ’em
Horns” hand symbol.
“While the University appreciates Donut Taco Palace’s enthusiasm, UT is understandably concerned about your use of the LONGHORN Marks in this manner,” the letter said. “We suspect that you were not aware of the University’s trademark rights when you started selling ‘Longhorn Donuts.’ We trust that, now that these rights have been brought to your attention, you will take the appropriate steps to discontinue sales of the ‘Longhorn Donuts’ and refrain from any other uses of the University’s marks.”
Craig Westemeier, UT senior associate athletics director for trademark licensing, said in an email that the university receives tips on trademark violations from a variety of sources, including alumni, fans, staff, faculty, students and anonymous emails. He said the UT brand must be monitored and protected to maintain its integrity and value.
“It is an integral part of the trademark law that we protect to regulate the use of and educate the public regarding our rights in these marks. That is our responsibility as a trademark owner,” he said. “We cannot permit the use of our trademarks without providing approval, review and quality control of the item being produced. An inferior product or one that is not properly vetted could hurt the University’s reputation.”
Austin trademark and copyright attorney JT Morris, who has no affiliation with the university or this situation, said the circumstances raise interesting questions.
“I think UT has recently been pretty aggressive in enforcing their trademarks, so it’s not surprising from that perspective,” Morris said. “The test when we’re talking about whether a trademark infringes or not is likelihood of confusion. Would a consumer see the doughnut with the Hook ’em sign and confuse it with the Texas Hook ’em sign to the point the consumer would think those doughnuts were affiliated with the university or that the university is endorsing those Hook ’em-shaped doughnuts? We’re not talking about athletic apparel or other things a consumer would affiliate with university symbols. We’re talking about a doughnut.”
This is not the first time UT has been criticized for its trademark enforcement. Earlier this month, Mississippi’s Kossuth High School announced it would drop its current longhorn logo — which it sported along with its double-take-inducing maroon-and-white school colors — at the request of the university. On the food front, in 2003, UT sued the owners of a burger joint called Bevo’s Grill for trademark infringement. The owners quickly changed the name.
Inside Donut Taco Palace, where pale pink walls are covered with photos of such menu items as a doughnut taco, there’s a blank space where the Longhorn Donut used to be. Seng said fighting the university would probably become a doughnut vs. Goliath proposition that she can’t afford, so for now she’s renaming it and selling fewer.
They’ve tossed around the name Lavaca, but haven’t settled on anything.
“Whatever we can call it,” she said, “without getting sued.”