ROANOKE, Va. — Virginia Tech has filed a civil suit against a Blacksburg real estate agent and Tech alumnus for using the word "Hokie" in his business name.
Tech filed the trademark infringement claim Oct. 18 in the U.S. District Court for Western Virginia against John Wilburn, broker and owner of Hokie Real Estate Inc.
The filing alleges that Wilburn is infringing on Tech's exclusive right to the "famous Hokies and Hokie trademarks," and asks that the company be ordered to pay Tech's legal fees and unspecified damages.
In 2009, Tech made about $1.6 million in fees and royalties from sales of licensed products and services, the filing stated.
But Wilburn's attorney, James Creekmore, said in an interview that the university never registered the term with the U.S. Patent and Trademark Office, and long ago gave up rights to the word "Hokie."
The university is "trying to extend their mark ... to a category of goods and services on which they don't have a federal trademark," Creekmore said. "Real estate services is not one of the uses for which the mark 'Hokies' is registered."
Tech turned down a request from Wilburn to approve his company's name through the university's licensing office, Tech spokesman Larry Hincker said.
Wilburn continued to use the name, despite a cease-and-desist letter sent by Tech in January.
The word "Hokie" is not listed in the federal database of registered trademarks. But according to federal rules, an entity does not necessarily need to register a mark to claim rights to its use. Tech asserts the right to "Hokie" belongs to them.
"We clearly created that term. The term 'Hokie' has no meaning outside the Virginia Tech environment. It's clearly unique to us and any value was created by us," Hincker said.
But Creekmore says that Tech gave up its claim to "Hokie" by at various times allowing, or at least failing to challenge, use of it by several businesses, three of which are still operating -- Hokie House, Hokie Hair and Hokie Spokes
None of the businesses pay licensing fees to Tech. Hokie Spokes owner Dave Abraham said several years ago he signed a contract with Tech to use the name. It's unclear if Hokie House or Hokie Hair ever had contracts.
Hincker said the university decided about a decade ago to grandfather them in, but also decided to disallow use of the name by any other businesses.
A disclaimer noting that Wilburn's company is "not affiliated with Virginia Polytechnic Institute and State University" is posted on the company's Web site.
But Tech's attorney, John Thomas, said he doesn't think that will prevent Wilburn's customers from assuming his company has some official connection with the university. And that might hurt a university-sanctioned real estate endeavor called Hokie Homes, launched in 2005 in partnership with Roanoke firm Balzer & Associates.
The business has been dormant for some time, but according to the filing, Tech hopes to reinvigorate it in the future.
"So now, along comes John Wilburn and across the street from Virginia Tech he opens Hokie Real Estate," Thomas said. "He didn't open up his business and call it Wilburn Real Estate, and say 'I'm a Hokie.' He's saying, no, no, this IS Hokie Real Estate."
And that, Tech officials argue, is a violation of the university's trademark.
According to the federal trademark office database, Virginia Tech owns rights to the marks "Virginia Tech," 'Hokies," ''Virginia Polytechnic Institute and State University," the tagline "Invent the Future" and the university's motto, "Ut Prosim," which in Latin means "That I may serve."