U of H to NFL: "Let's take this call to the booth."

The University of Houston Cougars' retro uniforms have drawn a lot of attention this season, and not just from college football fans. While the reaction from diehard Cougars fans and the city of Houston have largely been positive, not everyone is happy about the change. Topping the list is the National Football League, who sent the Cougars a cease-and-desist order in November. The NFL contended that the Cougars' uniforms, commissioned as an homage to the now-defunct Houston Oilers and worn only for special occasions or games, infringes on trademarks held both by the NFL and the Tennessee Titans, the team that the Oilers became when they left Houston and became an expansion team in 1996. But the University of Houston just publicly told the NFL to take their C&D and pound sand. The big question now becomes, which side has the better argument - and which one is more likely to prevail in court if the NFL decides to take the logical next step?

A Tale of Two Uniforms

As I've previously discussed, the Titans started their career as the Houston Oilers. In fact, the team's home games were played at Houston's Rice Stadium, on the grounds of Rice University, when the team started out as an American Football League franchise. But the Oilers franchise was moved to Nashville, Tennessee in 1997 and rebranded as the Titans in 1999. After that, the Oilers' logos were removed from the uniforms, although the team retained its Columbia blue colors and the team has trotted out the Houston design from time to time for special games, such as the December 17th, 2023 faceoff with the Houston Texans.

Meanwhile, the Houston Cougars, whose primary colors are red and white, made the decision in 2022 to commission new uniforms of its own for its players. The new design echoed the Houston Oilers' original uniform designs from the 1970s, the "Luv Ya Blue" era of the OIlers, for special and exhibition games. This was apparently a bridge too far for the NFL, which slapped the University of Houston with a cease-and-desist order to lay off wearing the new uniforms.

The IP Law View

Again, I reiterate that the NFL and the Titans have a pretty good case against the University of Houston if they decide to assert their priority rights of usage for the OIlers uniforms and related design elements. The fact that the colors of the uniforms are not exactly identical is unlikely to carry much water in court. The average person in the street would be unlikely to be able to correctly distinguish two very similar shades of light blue from each other. It is this element of brand confusion that the NFL and the Titans would be keen to avoid.

But what about the heritage argument?

The U of H is arguing that the throwback uniforms are a crucial part of Houston's football heritage, and as such, the Cougars have a better reason for using the retro uniforms than the Titans do. While this view may convince football fans, especially those who remember the Oilers' heyday, it's probably not going to get very far in court. After all, the Titans and the NFL jointly and individually hold a number of trademarks covering the various uniforms the team has worn in its various incarnations.

The reason trademarks exist is to prevent brand confusion. By using the throwback uniforms, the Cougars are creating a perceptual linkage between the University of Houston and the Tennessee Titans. It is unlikely that the NFL and the Titans would turn a blind eye to this, because both parties have invested incredible sums of money in securing every element of their brands. This includes overall designs as well as the crucial individual elements of each. And, of course, the NFL is very diligent in safeguarding its registered trademarks and protected IP from unauthorized usage.

Given these facts, the U of H's case is tenuous at best. The heritage argument doesn't lend much gravitas to the Cougars' position, and it's unlikely that the NFL is going to let this go.

But why take this all the way?

A major reason why the NFL would press the issue is because college football is itself an enterprise worth several billion dollars each year. Although college football is a primary feeder route to NFL recruitment, the NFL would be sensitive to either trademark infringement or any public perception that a given university's players might be given or denied preference in recruiting because of the uniforms they wear rather than their actual individual playing ability. And, of course, there's the idea that the Cougars' new uniforms might forge an association between the University of Houston and the NFL that simply doesn't exist.

Any of these would be a good enough reason for an IP holder to pursue sterner measures than a sharply worded letter. Putting all of them together, it would be irresponsible of the NFL NOT to take the next step and take the U of H to court. Between the preponderance of evidence on the NFL's side for their priority usage and the huge legal war chest the League can bring to bear, U of H doesn't have much of a chance here.

But there's one other factor we haven't addressed: When this story first broke, U of H said they would comply with the NFL's C&D. The fact that they've decided to renege on that statement and instead basically dared the NFL to do anything about it raises some very interesting questions. First, what made the University choose to stay the course with the new uniforms? Second, what makes the University believe that they can face off with the NFL in court and actually win?

The first question is only answerable by the University itself. However, the second offers up a number of probable theories, any, all, or none of which may be true. One scenario is that the U of H is willing to wager that the perception-conscious NFL won't want to risk giving even the appearance of trademark-bullying, especially when we're talking about a sports program that offers players a direct pipeline to the NFL. Another possibility is that the University is banking on any initial court proceedings being held in Houston, or at least in Texas. This would give the University a home-field advantage and a chance to trade on potential nostalgia for at least some of the people involved in the proceedings, such as the judge or some of the jurors. It's a big gamble, but one that could possibly pay off for the University.

How's this face-off going to go down?

At this point, I can't imagine the NFL backing down. A C&D is usually considered a warning shot for infringers, and it's usually enough. Such defiance is highly abnormal; for the defiance to be so publicly displayed is nearly unheard of. The NFL has to send a message, and it has to be one that's sure to resonate. This means that the next step will almost inevitably be a lawsuit against U of H.

What happens from there is an open question. The NFL's got a good case, but the fact that U of H is willing to openly ignore this implies that the University thinks it's got a winning trump card in its hand that the NFL hasn't considered. There's only one sure thing in this case, and that's the fact that no matter how this breaks down, it's surely going to have implications for high school, college, and professional sports of all kinds that will reverberate for years to come. Stay tuned, sports fans!

ABOUT JOHN RIZVI, ESQ.

John Rizvi is a Registered and Board Certified Patent Attorney, Adjunct Professor of Intellectual Property Law, best-selling author, and featured speaker on topics of interest to inventors and entrepreneurs (including TEDx).

His books include "Escaping the Gray" and "Think and Grow Rich for Inventors" and have won critical acclaim including an endorsement from Kevin Harrington, one of the original sharks on the hit TV show - Shark Tank, responsible for the successful launch of over 500 products resulting in more than $5 billion in sales worldwide. You can learn more about Professor Rizvi and his patent law practice at www.ThePatentProfessor.com

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