Intellectual Property Law

Virginia Tech HOKIES v HOKIE Real Estate

By Marty Schwimmer

Virginia Tech is a state university in Virginia.  The university's athletic teams are known as the HOKIES.  Also, "many or most Virginia Tech alumni recognize themselves as Hokies are proud members of the so-called Hokie Nation, in recognition of their affiliation with Virgina Tech."   Remember my article on Who Dat?  Virginia Tech has an incontestable registration for HOKIES for various merchandise.  It is also working on a HOKIE HOME program, which consists of home design plans to be marketed to VT alums.

In late 2009, VT learns that Hokie had opened up HOKIE REAL ESTATE.  It sued on October 18, 2010, defendant moves to dismiss, VT moves for a prelim in December.

Defendant argued that HOKIE is generic for a VT supporter.  Using the term HOKIE to refer to a supporter of Virginia Tech is like using the term 'apple' to refer to the [fruit]."    VT responded that "any person or business would be free to use any mark for any purpose simply by claiming to support the business of the owner of the mark."

The Court declined to resolve this, as it was a fact-specific issue not suitable for resolution at the motion to dismiss phase.

Another way of looking at this occurs to me: regardless of whether HOKIE is a generic term for a supporter of VT, HOKIE is certainly not the generic term for real estate services,  nor does it describe a material quality of the real estate services.

Defendant also argued that HOKIE is distinguishable from HOKIES, and that took  three paragraphs to reject.

VT's motion for preliminary relief failed, as it's showing was insufficient to show that it was likely to prevail, and that it would suffer irreparable harm.  Its dilution claim was undercut by a showing of 'a multitude of restaurants and other business  .  .  . currently utilizing the HOKIE mark without permission from the university."

Decision Virgina Tech Hokies

Full post as published by Trademark Blog on March 17, 2011 (boomark / email).