The University of Texas is trying to play havoc with Virginia Commonwealth University’s brand of basketball.
One day after it was officially announced that the Longhorns lured popular men’s basketball coach Shaka Smart away from VCU, they filed to federally register variations on the “Havoc” trademark that Smart pioneered in six years of high-intensity basketball with the Rams.
Texas applied at the U.S. Patent and Trademark Office on April 3 to register “Horns Havoc” and “House of Havoc” as trademark slogans for marketing the Longhorns basketball team and its athletic merchandise.
But Texas could be hooked on its own horns if VCU fights to protect its established use of “Havoc” in marketing the Rams’ basketball team and its frenetic style of play.
“With trademarks, the old mark wins in a fight,” said John Farmer, a trademark law specialist at Leading-Edge Law Group in Henrico County.
VCU officials say the ownership of the “Havoc” trademark is clear. “It is my understanding that trademark rights come through use, not registration, which means that VCU owns the rights that have developed in its use of Havoc in connection with our athletics program,” said Pamela D. Lepley, vice president for university relations at VCU.
Will Wade, hired Tuesday to succeed Smart as the Rams’ head coach, already has made clear he intends to continue the team’s “Havoc” style of play and market it across the United States.
“If you travel anywhere in the country and you say VCU basketball, I think the word associated with that would be Havoc,” Wade said. “We’re going to continue that brand. It’s a national brand. It’s something that’s brought our program to prominence, and we’re going to continue to use it.”
VCU Athletic Director Ed McLaughlin deferred to his new coach on the issue. “I think the style of play is more important to the kids than what you call it,” McLaughlin said. “But that’s all his call, and I’ll support whatever he wants to do.”
VCU may have left the trademark open to other claims by registering it only at the State Corporation Commission and not the federal trademark office, Farmer said. “VCU certainly would have been in a strong position if it had federally registered the mark,” he said.
Texas officials haven’t declared their reasons for pursuing the trademark registration or said how they intend to market the basketball program under Smart, but the move didn’t go over well with one of the founding directors of the VCU Brandcenter.
“It’s really a tacky move on Texas’ part,” said Kelly O’Keefe, a professor of brand management at the award-winning center and chief creative strategy officer at the Richmond office of PadillaCRT.
O’Keefe also doubts the wisdom of trying to brand the Texas basketballprogram with a trademark widely associated with VCU.
“Why do you want to be derivative of someone else’s brand?” he O’Keefe asked. “That’s just pointless. It makes everyone a loser.”
A legal battle could begin if the trademark office prepares to register the “Horns Havoc” and “House of Havoc” trademarks, which would require inviting public comment and opposition, Farmer said.
If VCU opposes the registration, Farmer said the two universities could negotiate an agreement or go to federal court, either in Virginia or Texas, depending on which one acts first. “You’d rather play on your home court, whether in basketball or law,” he said.
Lepley wouldn’t speculate on whether VCU would take legal action to defend the trademark, but O’Keefe said he would expect the university to oppose the Texas trademark registrations.
“I certainly would be encouraging them to pursue it as aggressively as it could be pursued,” he said.
Texas applied to register the trademarks under the university’s name, not Smart’s, so it “would be hard-pressed to say the brand travels with Mr. Smart,” Farmer said.
Ultimately, a trademark fight would come down to a decision on whether the proposed Texas trademarks would be “confusingly similar” to the Virginia trademark marketed by VCU, he said.
“Like horseshoes and hand grenades, too close will kill you in trademarks,” Farmer said.
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