TUSCALOOSA, Alabama – The University of Alabama will now own the trademark for “Houndstooth Mafia” under the settlement of a legal fight with a company that had manufactured merchandise with that logo.
With the trademark in hand, the university can now decide who – for a price – gets to use that logo on merchandise.
On Friday, attorneys for the Board of Trustees of the University of Alabama and trustee Paul W. Bryant Jr., and lawyers for Houndstooth Mafia Enterprises, LLC, and its owners William Pitts Jr. and Christopher Blackburn, jointly filed a motion and proposed order for a final judgment from U.S. District Court Judge David Proctor of the settlement in the case.
On Dec. 3, 2007, Blackburn and Pitts filed an application with the U.S. Patent and Trademark Office to register “Houndstooth Mafia” and the design, which incorporated a houndstooth pattern. Trustees filed an appeal with the Trademark Trial and Appeal Board. But last July that board awarded the trademark to Houndstooth Mafia.
Bryant and the Board of Trustees in September filed a civil lawsuit in federal court in Birmingham asking that the appeals board decision be overturned.
Earlier this month a settlement was reached but the details of what it includes were not undisclosed. An attorney for Houndstooth Mafia declined comment.
But the document filed Friday seeking the final order from the federal judge gives a few details:
- The parties acknowledge and agree that the appeal board’s order granting the trademark to Houndstooth Mafia should be vacated.
- Pitts and Blackburn signed over to the University all rights, title, and interest in and to the “Houndstooth Mafia” trademark.
- The application for a trademark for the “Houndstooth Mafia” design will now be registered with the University of Alabama as its owner.
- Houndstooth Mafia Enterprises and the University are bearing their own costs and attorney’s fees.
Attorneys on both sides had not responded by the time this story was published to emails from AL.com for comment on whether there are any other terms to the settlement or if the company will continue producing merchandise with the logo under license from the university.
Houndstooth Mafia had originally argued that the university did not own the houndstooth pattern, nor the term “Houndstooth Mafia,” which was a reference to a group of friends who tailgated at University of Alabama football games. The appeals board agreed and, regarding the houndstooth pattern, stated there was “no evidence that the hats worn by Coach (Paul “Bear”) Bryant were one-of-a-kind, custom-designed, or anything other than commercially-available men’s fedora hats.”
The University and Bryant, argued in court documents that it was an infringement on its trademarks. That view was also reflected in Friday’s motion by both sides.
“Coach Paul “Bear” Bryant regularly Wore a Houndstooth-pattern hat while on the sidelines of the University’s football field for many years before his death in 1983,” according to Friday’s joint motion. “Because of the positive and widespread association of the Houndstooth pattern with the University, the University has used and licensed the Houndstooth pattern as a trademark in connection with a Wide variety of goods, and the Houndstooth pattern has become a well-known source identifier for the University.”
The university has aggressively pursued companies it believes has infringed on its trademarks.