It seems that Donuts Taco Palace Austin is in trouble, or at least the University of Texas wants them to be in trouble. Everything started when Ms. Seng, owner of the bakery, decided to introduce her new creation: the Hook ‘Em donut, sometime ago.
What has this to do with the University of Texas (UT), you may be wondering. Well, it happens that UT owns several marks of the “Longhorn” family in US, including word marks for “Longhorn” and “Hook ‘Em“.
And also figurative marks covering the gesture itself!
In Democratizelaw we are not sure whether the ‘trademark family’ that UT owns also covers foods (class 30), but when someone who owns a bakery receives a cease and desist letter from a law firm representing a large rights holder, what normally happens is that the threaten individual complies with whatever the law firm requests her to do. Regardless of whether the claim is completely founded or not.
“While the University appreciates Donut Taco Palace’s enthusiasm, UT is understandably concerned about your use of the LONGHORN Marks in this manner (…) 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.”
We are not entering here into the discussion about whether this might be a case of trademark trolling but, the truth is that desisting is precisely what Ms. Seng did. At least, partially. Now, you still can buy her horn-shaped donuts (rebranded as “El Toro” donuts), and support this 36 years-old entrepreneur born in Cambodia to keep her business alive… provided that UT decides that the name rebranding is good enough to avoid confusion with their “Longhorn” marks. In any case, one thing is pretty clear: heavy metal fans won’t be happy with this decision.