## Facts

- The Board of Regents of the University of Texas System (on behalf of UT Austin) owned federally registered trademarks for a longhorn silhouette logo used on athletics and related goods and services.
- KST Electric, an electrical-services company whose principals were UT athletics fans, created and used a “Longhorn Lightning” logo incorporating a longhorn-head silhouette with a lightning bolt.
- KST used its logo on business materials such as trucks, equipment, and promotional items.
- UT sued under the Lanham Act, asserting trademark infringement, unfair competition, and federal dilution under the Trademark Dilution Revision Act of 2006 (TDRA).
- On the TDRA dilution claim, KST relied on a general-consumer survey in which 5.8% of a nationwide sample associated the longhorn logo exclusively with UT.
- UT challenged the survey and offered evidence of national exposure through collegiate athletics, merchandising, and sponsorships, including survey evidence showing near-universal recognition among nationwide college football and basketball fans.

## Issues

1. Whether UT’s longhorn silhouette logo was “famous” under the TDRA, meaning widely recognized by the general consuming public of the United States.
2. Whether KST was entitled to summary judgment on UT’s federal trademark infringement and unfair competition claims.
3. Whether KST was entitled to summary judgment on its affirmative defenses of laches, estoppel by laches, and statute of limitations.

## Decision

- The court adopted a magistrate judge’s report and recommendation.
- The court granted summary judgment for KST on UT’s federal trademark dilution (TDRA) claim because UT failed to raise a triable issue that the mark was nationally famous among the general consuming public.
- The court denied summary judgment on UT’s trademark infringement and unfair competition claims because genuine disputes of material fact remained, including likelihood of confusion.
- The court denied summary judgment on KST’s defenses of laches, estoppel by laches, and statute of limitations due to unresolved fact issues.

## Legal Principles

- Under the TDRA, a mark is “famous” only if it is widely recognized by the general consuming public of the United States as a designation of source.
- Evidence showing strong recognition within a geographic region or among a market segment (such as sports fans) may be insufficient to establish TDRA fame.
- Summary judgment is proper only when no genuine dispute of material fact exists and the movant is entitled to judgment as a matter of law; courts do not weigh evidence or decide credibility at that stage.
- Likelihood-of-confusion claims under the Lanham Act are often fact-intensive and may be unsuitable for summary judgment when material disputes remain.
- Equitable and timing defenses such as laches and related defenses may be denied at summary judgment when facts concerning delay, knowledge, and prejudice are contested.

## Conclusion

The court narrowed the case by dismissing UT’s federal dilution claim, holding that the Longhorn logo’s demonstrated regional and sports-fan prominence did not satisfy the TDRA’s national general-public fame requirement, while allowing infringement and unfair competition claims (and rejecting timing defenses at summary judgment) to proceed due to disputed facts.


Bd. of Regents, Univ. of Tex. Sys. v. KST Elec., Ltd., 550 F. Supp. 2d 657 (W.D. Tex. 2008)