Oklahoma State files trademark infringement lawsuit against New Mexico State
In a recent lawsuit filed by Oklahoma State University against New Mexico State University, OSU claims the “Pistol Pete” mascot that NMSU is using is infringing upon OSU’s registered trademark and service mark.
In the Complaint filed in the Western District of Oklahoma, OSU claims to have common law and international rights to the mark. Specifically, OSU has a registered trademark and service mark with the United States Patent and Trademark Office (USPTO). Further, based upon the declaration by OSU after five years of continued use, its trademark and service mark have been declared incontestable pursuant to Federal Statutes. (While a trademark can be declared as “incontestable”, it actually just means it is very hard to contest the validity of the mark, but surely not impossible.)
In this four claim Complaint, OSU alleges that NMSU has been using a “confusingly similar” mark that is likely to cause confusion or mistake. Meaning: OSU is alleging NMSU’s mark is so similar to OSU’s registered mark that an objective third party may believe the two marks are affiliated in some form, or may confuse NMSU’s mark as indicating OSU, or vice versa. Protecting one’s trademark is essential in protecting one’s brand, and thus, OSU may have its brand diluted through the infringement by NMSU. Dilution and infringement of a trademark can have a long term negative monetary impact on the rightful owner.
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OSU initially sent a cease and desist letter to NMSU. Allegedly, NMSU failed to cease the use of the alleged trademark, and therefore the lawsuit commenced.
NMSU may have several valid defenses. For instance, if a court were to determine that the two marks were not in fact confusingly similar, then the two marks could co-exist. When dealing with trademark litigation, one thing is constant. When a party fails to respond to a cease and desist letter and litigation commences, settlements are less likely to occur. This is because the amount of time, attorneys fees and costs that have been expended by the Plaintiff is now significant and a judgment in court may recoup the prevailing party of those fees and costs.
Benjamin C. Haynes is a partner at the law firm of Haynes & De Paz in Orlando, Florida, and a contributor for Sporting News. Follow him on Twitter @BHaynes32.
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