Virginia Tech is preparing legal action against local real estate firm Hokie Real Estate for using the word “Hokie” without permission.
Tech spokesman Larry Hincker said the university has stopped allowing retail establishments to use “Hokie” in their names.
“The thing about a trademark is that you’ve got to control it to keep it,” Hincker said.
While other business use “Hokie” in their names, including Hokie Hair, Hokie Spokes and Hokie House, their naming rights have been grandfathered into the policy with permission from Tech.
“(Tech has) been using Hokie for more than a century,” Hincker said. “It was created by us and has no meaning outside of the university.”
Hokie Real Estate owner John Wilburn is a Tech alumnus, but the university made it clear it’s not his identification as a Hokie that’s the problem.
“John Wilburn clearly made a commercial business decision to use the name,” said John Thomas, an attorney speaking on behalf of the university. “He didn’t call it Wilburn Real Estate and then say he’s a Hokie.”
Wilburn’s attorney said the use of the name doesn’t affect Tech because it is in a different business.
“Our client is a real estate broker, he provides real estate broker services,” said Keith Finch, an attorney representing Wilburn. “They don’t state in their claim that they use it for that purpose.”
The disagreement comes from whether Tech uses the Hokie name for real estate, which the university claims it does.
Finch said consumers “are not likely at all to be confused that Hokie Real Estate is associated with the university.”
Finch said first-time home buyers are likely to do research before choosing a broker, and all of Wilburn’s signs contain a disclaimer that he is not associated with the university.
“There is the risk that the public will assume that Hokie Real Estate has affiliation or authorization from Virginia Tech,” Thomas said.
Thomas noted Tech’s affiliation to the Hokie Homes project.
Started in 2005, Hokie Homes was created to license the unique “Collegiate Gothic” look of Tech in architectural plans for residential homes. The project is a collaborative project between Tech and architectural group Balzer & Associates, Inc.
Thomas said the Hokie Real Estate name could cause confusion for consumers looking for Hokie Homes.
“People will want that Hokie Home that will inspire memories of VT,” Thomas said. “And they will go to Hokie Real Estate.”
Wilburn’s attorneys claim this isn’t the case.
“They don’t state that they actually sold any of those (Hokie Home) plans,” Finch said, adding had Tech sold any, it would have claimed it in the complaint.
Thomas disagrees with this claim.
“Virginia Tech hasn’t given up on the project and has an ongoing dialog with the architects,” Thomas said.
Wiburn’s attorney also contested Tech’s right to control the trademark.
“The main thing is Hokie Real Estate is on Main Street, between Hokie Hair across the street and Hokie Spokes and Hokie House down the street,” Finch said.
Finch said that the university fails to monitor and enforce the quality of the organizations that use the name.
“That’s what we would call a naked license,” Finch said. “If they don’t police the trademark, they lose the right to control it,” Finch said.
Thomas said Tech’s lawsuit is an act of policing their trademark.
“Virginia Tech does police their marks and haven’t lost their rights,” Thomas said.
While Thomas said Tech will pursue legal action against Hokie Real Estate, he declined to put a timetable on any legal action Tech would take.