University Of Texas Bullies Pastry Shop Over Donuts Shaped Like 'Hook 'Em Horns' Hands

from the donut-do-that-again dept

Thu, Sep 1st 2016 11:19pm — Timothy Geigner

While the University of Texas is no stranger to being a trademark bully, and colleges in general have become overtly maximalist in intellectual property protectionism, it can still be stunning to see the lengths to which a school will go. The latest trademark dispute concerning UT involves donuts shaped in the 'hook 'em horns' gesture, because apparently the school is now in the pastry business. Recently, the owner of Donut Taco Palace 1, Angel Seng, received a threat letter from the university insisting that she stop making donuts that look like horned-hands.

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 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.”

And here is a picture of the donuts in question.

Now, while the UT website page that specifically discusses licensing arrangements in the most non-specific manner possible doesn't detail which areas of commerce it has trademarks on for the hook 'em hand gesture, nor does the letter that Seng received, UT representatives have managed to trot out the tired old excuse for why the school must behave this way.

Craig Westemeier, senior associate athletics director for trademark licensing at the University of Texas, said in an email that the university receives tips on trademark violations from a variety of sources including alums, fans, staff, faculty, students and anonymous emails. He said the UT brand must be monitored and protected in order 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.”

As we've pointed out over and over again, the threat-hammer is not the only way someone can go about protecting its trademark from dilution. With that even being said, there are real questions as to the validity of UT's claim. Questions such as: does the school have a trademark on the hand gesture in the area of baked foodstuffs, can it demonstrate any real or potential customer confusion as to whether or not the school was involved in the creation of these donuts, and exactly how often has the school gotten into trademark disputes with heavy metal rock fans and satanists that famously use the same hand gesture?

Sadly, these questions will go unanswered, because trademark bullying works.

Inside Donut Taco Palace, where pale pink walls are covered with photos of menu items that include a doughnut sandwich (a cinnamon roll, cut in half, toasted and stacked with cheese, egg and sausage) and yes, 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 re-naming it and purposely selling fewer.

“We’ll change the name and let it go,” she said. “It wastes time to fight back. It’s not worth it.”

Way to hook 'em, Longhorns...

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Filed Under: donuts, doughnuts, hook 'em horns, trademark
Companies: donut taco palace, university of texas

38 Comments

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JoeCool (profile), 1 Sep 2016 @ 11:26pm

New doughnut
It's only got ONE finger extended, and you know which one. ;)
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Anonymous Coward, 2 Sep 2016 @ 12:24am

Marvel should be involved also
http://marvel.com/characters/54/spider-man
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That One Guy (profile), 2 Sep 2016 @ 12:40am

Prior art, what prior art?
'Hook ‘Em hand symbol', you mean that thing that metal-heads/rockers have been doing for decades and that has absolutely nothing to do with sports or universities at all?

I'd ask how they managed to sneak that one through the trademark offices but given how insanely broken the system is I wouldn't be surprised at this point if someone managed to trademark the 'okay'/thumbs-up hand shape/symbol, because why not?
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Anonymous Coward, 2 Sep 2016 @ 1:21am

Prior art from.....
*Churchlady voice* Is it...... SATAN!?
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Narcissus (profile), 2 Sep 2016 @ 1:33am

So, what do you think happened first? The University thought that this well-known gesture fit their branding perfectly and they made a conscious effort to get it adapted by their fans OR the fans just started using it organically and the University adapted it in their branding by selling merchandise?

I don't know but I think the 2nd option is more likely. Assuming that is the case they're now violating their fan's trademark gesture.
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Anonymous Coward, 2 Sep 2016 @ 1:44am

Re: New doughnut
Keep two finger extended, and spread, the two nearest the thumb.
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Anonymous Coward, 2 Sep 2016 @ 3:50am

Re: Prior art, what prior art?
It goes back much further than that. Not only does it mean bullshit in sign language, but it has been a symbol for casting out evil in India for thousands of years. Other colleges in the US have used it from as early as the 1930's without attempting to trademark it. In Italy, it means being cuckolded. If UT doesn't drop its stupid bullying on this topic, make them pay for all lawyer fees and then lose the trademark that they don't deserve in the first place. Bullies don't deserve public protection.
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Anonymous Coward, 2 Sep 2016 @ 4:01am

Sell "Fook 'Em Horns" instead
....................../´¯/)
....................,/¯../
.................../..../
............./´¯/'...'/´¯¯`·¸
........../'/.../..../......./¨¯\
........('(...´...´.... ¯~/'...')
.........\.................'...../
..........''...\.......... _.·´
............\..............(
..............\.............\...

ASCII art source: http://www.ascii-middle-finger.com
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JustMe (profile), 2 Sep 2016 @ 4:18am

Yeah, hard to see how the college has a case
There are only five digits and just a few ways a single hand can arrange those digits. This particular symbol was used for thousands of years. The term 'longhorn' refers to any number of lazy, dumb, mouth breathing varmints (much like the President and lawyers at the University of Texas). I think this is a perfect First Amendment test case. Someone put out the Popehat signal.
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Ninja (profile), 2 Sep 2016 @ 5:30am

Re: Sell "Fook 'Em Horns" instead
Delightful idea. I'd go sell them in front of the university for added effect.
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DR650 (profile), 2 Sep 2016 @ 5:47am

Horns down
Turn the "horns" down and call them Sooner donuts. The ultimate revenge!
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Michael, 2 Sep 2016 @ 6:08am

Re: Re: Prior art, what prior art?
Not to mention, IT IS A HAND. How the heck did they manage to trademark an image of a hand? Didn't the guy approving this as the trademark office have at least one of these used to operate his rubber stamp?

We really need to push for laws that put some accountability on the people approving marks like this.
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383bigblock (profile), 2 Sep 2016 @ 6:08am

Dam Tea Sips
Leave it to a Tea Sipper to fuck up a donut shop's business. Did it ever occur to those dumb ass Horns that the shop was actually honoring them and helping their brand at the same time.

Maybe I missed the part where this guy is cutting int UT's Billion dollar donut busines......oh, sorry they don't sell Fucking donuts just half-ass sheep skins.

Gig-em Aggies.
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MDT (profile), 2 Sep 2016 @ 6:16am

Not so cut and dried
I agree they shouldn't have gotten a trademark on the fingers, it's a thousand year old gesture.

However, the donut shop WAS using the team to sell donuts. They used the teams name, the phrase, and at one point, per the local news, even had team logos up on the donuts. This is not a local donut shop having some hand shaped donuts and getting sued for it, this is the shop using the local team's logos and name and trademarked phrases, and having a donut shaped hand.

The shop owner took down all the team logos and renamed the donuts. Honestly this seems less like bullying and more like 'Quit using our team logos and trademarked phrases to sell your donuts without going through the licensing to use our name'. I got no problem with the team not wanting her to use their name to sell donuts without getting a share.

The trademark on the hand symbol is stupid though.
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Monday (profile), 2 Sep 2016 @ 6:40am

Huh?
Rock on Angel. Rock on.
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Anonymous Coward, 2 Sep 2016 @ 7:04am

Lost Respect
Way to go UT.
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Anonymous Anonymous Coward (profile), 2 Sep 2016 @ 7:56am

Re: Re: Prior art, what prior art?
I think this has been used as a gang symbol as well. Makes one wonder why they aren't suing gangs as well. Potential retaliation, um, not in a court?
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JoeCool (profile), 2 Sep 2016 @ 8:23am

Re: Not so cut and dried
You drank the cool-aid. You've got the ownership mentality. The University has a trademark of certain words and phrases only as used in a limited number of areas of commerce. Anywhere else they are free for others to use. The Uni doesn't OWN the words/phrases/hand gestures. They cannot forbid any other use of them. Too many people feel that trademark means you own the words/phrase/etc and can control ANY use of them. This is a lie.
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JustShutUpAndObey, 2 Sep 2016 @ 8:45am

Integrity and Value
"...order to maintain its integrity and value."

by threatening bakeries?
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David, 2 Sep 2016 @ 9:07am

Now I'm hungry
And want a cronut. Oh wait, those are trademarked, too.
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Wyrm (profile), 2 Sep 2016 @ 9:09am

Re: Not so cut and dried
True enough except for one little detail: what common business opportunities do a university and a donut shop have in common? Moreover, it was not a case of trademark dilution because specifically using the trademark to refer to the trademark owner is not dilution.
What's left?
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Anonymous Coward, 2 Sep 2016 @ 9:46am

I hope the estate of Ronnie James Dio sues UT for violating the spirit of metal. And no, that would NOT be any more ludicrous of a lawsuit than this one already is.
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Skeeter, 2 Sep 2016 @ 9:47am

Shaka, Bro
If the donut shop had simply said, 'This has nothing to do with the UT, but is brotherhood with universal friendship and peace by symbolizing the sign 'Shaka' from the Hawaiian culture, this could not only have been averted, but probably won, and as a result, would have called UT's 'Longhorn' symbol into copyright question. Que Sara, the more you know, the more everyone looks like little evil morons.
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Anonymous Coward, 2 Sep 2016 @ 9:57am

Longhorns .. heh. Boomer Sooner
nuff said.
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Anonymous Coward, 2 Sep 2016 @ 9:59am

Re: Re: New doughnut
They could even frost the fingers to match.
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Anonymous Coward, 2 Sep 2016 @ 12:14pm

Re: Dam Tea Sips
Go down to College Station and try to sell doughnuts with a single extended thumb. Let me know how that works for you. I'm pretty sure that the money-grubbers in charge of our beloved alma mater would do the same thing. The management types are all cut from the same bolt of cloth.

But I suppose one could claim that those are "hitchhiker" doughnuts, and any similarity to other symbols is purely coincidental.
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Homer, 2 Sep 2016 @ 1:11pm

New line
She should start a new line of University of Texas "The Finger" doughnuts.
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MDT (profile), 2 Sep 2016 @ 1:26pm

Re: Re: Not so cut and dried
So... you are saying that it's perfectly fine to take the team emblem, put it up in your shop, over the donuts in question, and say 'Buy these donuts'? Implying that they are associated with the school?

I am far from an IP maximalist, but, there IS such a thing as brand. I would be just as against someone taking the Apple logo, slapping it on donuts, and saying 'Buy these Apple Company Donuts'. Or a USMC logo, or any other official trademark that they did not license.
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MDT (profile), 2 Sep 2016 @ 1:28pm

Re: Re: Not so cut and dried
It is a case of trademark dilution. The college works with a lot of local businesses to license official school endorsed things, including t-shirts, artwork, and even food. The owner took the school emblems and other registered trademarks and used them.

I have no issue with her selling donuts, even hook'em horn shaped donuts, but you don't get to ride on the coat-tails by putting up school logos over them and pretending like you're officially associated with the school.

Can't we have some balance? We all get angry when Big Business acts in an unreasonable manner, and rightly so. We should also get angry when Small Business acts unreasonably too.
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hopponit (profile), 2 Sep 2016 @ 2:45pm

horns hands
Am I the only one thinking the bakery can make a whole lot more money off this with a simple "adjustment"? Make it only one finger (not index) and all them F-'em horns.
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Bergman (profile), 2 Sep 2016 @ 5:00pm

Re: New doughnut
They could name it "Our regards to UTexas" and it would be protected speech just as much as making a UTexassucks website is.
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JMT (profile), 2 Sep 2016 @ 6:07pm

Re: Re: Re: Not so cut and dried
"So... you are saying that it's perfectly fine to take the team emblem, put it up in your shop, over the donuts in question, and say 'Buy these donuts'?"

Why don't you instead explain how it's not? Tell us exactly how the university is harmed in any way by this. Does it compete with their own baked goods? Oh that's right, they don't have any? Does it disparage them in any way? Nope, how could it? Fill in what's missing here.

"Implying that they are associated with the school?"

How does anyone leap to that conclusion? It obviously suggests they support the university team, but how is any formal association implied by a mere donut?

"I am far from an IP maximalist..."

The fact that you're happy to see this as a valid trademark instead of a symbol of how broken the system is does not help this claim...
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Kylie cope, 2 Sep 2016 @ 6:20pm

Re: Sell "Fook 'Em Horns" instead
This is GENIUS!!!
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Mike Brown (profile), 2 Sep 2016 @ 6:34pm

Look out, Hawaii
Here in Hawaii, this gesture is everywhere. It's about as common as waving hello/goodbye. https://en.wikipedia.org/wiki/Shaka_sign

On a side-note, those doughnuts look awesome. If Texas proves to be too litigious, that bakery should come here.
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MatsSvensson (profile), 4 Sep 2016 @ 10:37am

WTH do you feed your dogs over there?!
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newsome (profile), 5 Sep 2016 @ 8:26am

How DARE You!
The unmitigated NERVE of this donut shop to promote UT without the college's permission. What gall, I mean really.
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Wyrm (profile), 5 Sep 2016 @ 1:40pm

Re: Re: Re: Not so cut and dried
No. What you describe is trademark infringement, not dilution.
- dilution is using the trademark as a generic term for the class of products it is. Example: saying you will "google" something although your actually using Bing.
- infringement is using a brand name either to pass your product another or to pretend you're endorsed by the brand.

We can argue for that last case, but definitely not the first one.
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Chris Ryan, 23 Nov 2016 @ 4:55pm

Re: Prior art from.....
They also sent a cease and disist to a company called WiFi Training, who uses a Rock N Roll hand sign as the W for WiFi. We can't find anywhere them registering a LOGO though just text, and what about the many cultures in the world who use the hand sign, and ummm Spider Man?

Seems like UT attorney's have too much time on their "hands"
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