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Houston Cougars to Add Blue Uni Despite NFL’s Cease-and-Desist Letter

The University of Houston is basically telling the NFL where they can stick it.

As you may recall, the Cougars unveiled a Houston Oilers-themed alternate uniform last season. That was a provocative move, because the Oilers’ intellectual property rights are owned by the Tennessee Titans. Sure enough, after the Cougars’ new alternate design made its on-field debut, the school received a cease-and-desist letter from the NFL, which said “the Houston Cougars’ attempt to free ride on the popularity of the NFL … violates the intellectual property rights of the NFL and the Titans.”

That might have been the end of the story — but it’s not. The Houston Chronicle is reporting that the Cougars, after evaluating their legal position, have decided to go ahead with the blue alternate, and might even add similar blue uniforms for all of the school’s teams.

Per the Chronicle story, the school’s position is that the city of Houston’s connection to the light-blue color long predates the Oilers. “We literally have a story [to] show the city uses it,” Cougars athletic director Chris Pezman told the Chronicle. “This isn’t a reach. This is a layup. We’ve got a very defensible position.”

Pezman also told the Chronicle that the school is making one concession: It’s modifying the helmet and pants striping to make the uniform less Oilers-y.

The school notified the NFL of its decision in mid-April. So far there’s been no response.

If the new uniform comes to fruition, one option the school is considering is to wear the blue design for home games against in-state opponents.

The Cougars aren’t the only Houston team that’s been affected by the Titans stranglehold on Columbia blue. The NFL’s Houston Texans reportedly had to negotiate a compromise with the NFL regarding how much of the light-blue color they could use in their recently unveiled uniform set.


Comments (49)

    Serves you right, Titans! Go Cougars and paint the whole town (Columbia) blue!

    Good for UH. This is mainly a defiance of the Adamses and what Bud did to Houston, but the NFL can lump it.

    Just wondering: did the NFL do the same thing when the University of Iowa, under Haden Fry, used some of the Steelers’ touches (which remain today)?

    At one time they were Identical. Now, they have each changed their number font over the years. Probably didn’t mean as much back then. Merch probably wasn’t as big of a $$$$ game as it is today.

    Plus I think that the Rooney family thought differently about this issue as the Adamses do.

    Interestingly, Michigan State, when coached by George Perles, only had the Block S on one side of their helmets, a callback to when he was an assistant with the Steelers.

    Iowa specifically reached out and got permission from the Steelers in the late ’70s before changing their uniforms. So unlike Houston, Iowa headed off a potential source of contention beforehand. I’m not saying that I agree with the way the Adams family has handled this, but I’m wondering if a little communication on the front end by Houston would have helped in this situation.

    Given how those folks threw a fit about any light blue being used in conjunction with the Texans, I’m guessing reaching out to them beforehand wouldn’t have improved the outcome here.

    That the NFL thinks the Titans should have a say on a Houston team using a color that has been associated with Houston since at least 1915 (when the Houston city flag was adopted) is all kinds of crazy, but this is where we are.

    I hope in another few years the Texans are able to design a alternate that has even more Houston blue in it.

    Are there any intellectual law attorneys here who can speak to how defensible it is to assert copyright and/or trademark rights over a color? It seems like a stretch to me particularly in a sports context, but I don’t really know

    My thought/question exactly.

    I can *almost* see why the Texans needed to clear their color scheme, since they not only play in the same league as the Titans, but are guaranteed to play against them twice a year. That doesn’t explain why the Bengals were allowed look like knockoff Browns through the 70’s, but those were different times I guess.

    But the idea that the Titans “own” light blue seems as absurd as Ohio State trademarking “The”.

    IP attorney here. It is POSSIBLE to claim rights in a color. Most notably, Owens Corning was able to claim rights in pink for insulation. It is not easy to claim rights in a color, though, as your question suggests.

    That said, I think there are at least three complicating factors here. First, it’s easy to discuss this as claiming rights in a color, but I think it’s more accurate to say that there is a claim in the color combination of light blue, red, and white. Second, it’s not just a claim to rights in a color (or color scheme), it’s a claim to the arrangement and layout of those colors. Third, there is an admission of copying (called “inspiration”, but while these may be fauxback-type designs, they are clearly and admitted derived from the old Oilers design). An admission can be relevant the analysis. In other words, the claims are not as unreasonable as they may seem on first blush.

    Which doesn’t mean the Titans are right or will win. A first hurdle is whether the Titans still own any rights to the color combo, considering that they stopped using it when they moved. Also, the key question in any trademark case is whether there is a a likelihood that consumers will be confused as to the relationship between the two items or the two providers, based on the trademark. Even if the Titans can claim rights in the color combo, the use of the University of Houston umbrella works to dispel that confusion to at least some degree. Also, while the Titans can (reasonably) call the “inspiration” an admission of copying, that very same public statement can also be said to serve as a disclaimer (a statement that “we’re not connected”). Disclaimers are not the most effective tool for preventing confusion (or avoiding infringement), but they can play a role. Finally, college and professional football are different markets, and that can matter.

    And with that, I’ll end with a Kafka quote that for a long time I thought was attributable to Milton Berle – A lawyer is a person who writes a 10,000-word document and calls it a “brief”.

    Lol! My girlfriend works as a legal assistant and was telling me about a 100+ page “brief”. I was very confused.

    Thanks Jeff. This was sort of what I assumed was the case. It is less about control of that shade of blue, but rather allowing others to mimic the Oilers design. Regarding whether the Titans still have rights to it, I am guessing part of the reason they are using the Oilers throwback now is specifically to keep a legal claim to it.
    So it comes down to how UH can use that blue (with red and white) in the spirit of the Oilers, but not fully be copying them.
    Regarding the issue with the Texans and them bringing columbia blue (refuse to use their awful new name for the color), I am guessing their minimal use of it really had a lot to do with maintaining a degree of peace within the NFL community rather than upsetting the apple cart by insisting on being able to use it more than they did. That said, it seems the real issue would have been the Titans didn’t want the Texans to have a uniform that was a white helmet, columbia jersey, and white pants, featuring red trim. That seems like a reasonable request. So I would think the Texans could have pushed the envelope more with the use of columbia, rather and it just being an accent color in their new design. But also I suppose their combo of navy, columbia, and red faces the other problem of already being similar to the Titans current set.
    I guess the nonsense of all this is the Titans ownership is saying they are the Titans now, and the history and value of their past as the Oilers is theirs to own and ignore, the city of Houston can’t celebrate that history. We don’t want to use it, but we know you could make money off it, so therefore others can’t use it either.

    I like the disclaimer idea! The Cougars should replace the “Houston” workmark on the front of the jersey with “Not the Oilers!” That would work.


    My understanding about Owens Corning though is that they registered a trademark for the colour pink for insulation. The registration was challenged but once it was finally granted, its their trademark, no doubts.

    Is the NFL / Tennessee claiming a common law trademark over that colour combination? In Canada, breach of a common law trademark is the tort of passing-off and its scope is really, really limited (and its a really hard suit to win as plaintiff. (I’m a part-time IP lawyer but in Canada where the law is obviously very different). I’m curious because I don’t see where anyone has said what rights the NFL/ Tennessee has to those colours.

    Lots to respond to. That’ll teach me to try to get work done during the day. Time for another “brief’ answer

    Greg – I can’t speak to why the Texans agreed to the limitations they accepted, but it does seem like there’s more internal NFL politics than legal claims going on. The Texans did have theoretical arguments that the Titans abandoned any rights in the color combo that they did have – rights are lost in a mark when you cease use of that mark at a time when you don’t have an intent to resume use of the mark. That happened with the Titans changed their color scheme. Even if the Titans continued to sell Oilers designed shirts, I think there are arguments that that is not use in connection with entertainment services in the nature of football games (or some similar description). That sounds good, but in modern NFL practice, is not particularly attractive, since it means that the Texans could play in whatever they wanted, but couldn’t sell merch. (And there is also the question of whether the Titans gained new rights when they adopted their throwbacks). That’s a long way of saying, “yeah, I agree, they probably didn’t want to upset the apple cart.”

    On top of all that, is anyone in the NFL going to argue that another NFL team abandoned its rights? Certainly not publicly, and maybe not at all.

    That likely left the Texans with limited arguments and, at least as the NFL is currently constituted, limited interest in relying on the arguments it did have (“we’re going to use it on the field, but we won’t sell merch” is not the outcome they want).

    And the Titans have some legal legs In terms of a legal basis. As you note, the navy/columbia blue similarity could also have played a role. That could potentially be designed around in a variety of ways, and in fact, they agreed to one such design around.

    mike 2 – Your understanding of the Owens Corning case is correct. Procedurally, it may have been an application that was refused, which refusal was appealed, but the outcome is the same – there is a decision finding that Owens Corning has rights in pink. And that decision is the key precedent for the proposition that color is protectable.

    In the US, there are different sections of the Lanham Act that protect registered and common law (unregistered) rights (Sections 32(1) and 43(a), if you’re interested). Although there are different statutory sections, the test of likelihood of confusion is the same. US trademark law has very strong protection for common law marks. The value of a registration is more evidentiary (easier to prove the existence and ownership of rights) than substantive (it doesn’t change the test).

    Your question of what Tennessee owns is valid, and since, as far as I know, this has all been resolved through private letters and negotiation, we likely won’t ever know what they claimed. Based on UH’s response, one possible scenario is that the Titans realized that their rights in the columbia blue/red/white combo was subject to challenge based on the abandonment theory I discussed above, and limited its claim to columbia blue. That’s a more solid foundation, but opens the door to the argument that columbia blue is a color associated with Houston, and entitled to limited, if any, protection.

    Love Jeff’s responses – especially as someone working on the “business side” (fashion design runs into a lot of IP issues – whether it’s color combos or silhouettes or even the layout of a plaid – hello Burberry).

    One callout since he brought up the key point on continued usage of the marks/colors – The titans did wear that uniform combo briefly in Tennessee and of course threw back to it last year. And in the interim they were still likely commercializing those elements (albeit maybe a bit behind the scenes) when we consider Oilers throwback gear has been consistently available through key partners like Mitchell and Ness. The titans do own that IP.

    As he pointed out, the key question is whether or not a new execution creates “brand confusion” in this specific context and the nuance of the execution itself. It will be fascinating if this does become a legal case because – say, unlike the browns leaving cleveland – that identity tends to be more seen as tied to houston than to the titans franchise (vs the browns colors and marks while being synonymous with cleveland football are “browns” identity elements and not also “cleveland” identity elements).

    Since 1998, the Tiffany Blue color has been registered as a color trademark by Tiffany & Co. It is produced as a private custom color by Pantone, with PMS number 1837, the number deriving from the year of Tiffany’s foundation.

    Joe – Thanks!

    I tried to account for your point about ongoing use, but obviously wasn’t clear enough. Trademark rights relate to specific products. That is, there is Delta airlines, Delta faucets, Delta tools, and Delta dental. Those “delta” trademarks all coexist, even though they are identical. That’s what I was getting at about being able to use uniform combos on the field but not being able to sell merch – they are, arguably, different markets. In practice, it would be waaay more complicated than that (for a lot of reasons), but that was what I was getting at – selling shirts is not the same thing as selling entertainment in the nature of a football game (or team or league). Behind the scenes marketing could create some rights in shirts, but the entertainment rights would be harder to prove. And without a registration, the rights are more easily limited to Tennessee (or at least “not Texas”). Again, more complicated than that, but it gets at the idea and highlights another benefit of registration – nationalization of rights (rather than just where you sell).

    T-Mobile’s claims in magenta are a good example of this “market” principle in action. I don’t pretend to have looked at that matter closely, but even without much research, I would have likely advised that asserting rights in magenta against an insurance company would be difficult, at best, for a telecom company, and that they would be likely to lose. I understand that they also took action against AT&T. Assuming that the colors were similar, that’s a much better case (and there is at least some reporting that they won).

    Gotcha – from what I’ve read on the situation it seems like the use (or lack thereof) on field is less relevant here as (opposed to just selling t shirts or hats) they’ve also been selling jerseys throughout this time period and holding their claim on the full Oilers identity. But that distinction you bring up isn’t something I’ve thought of in this particular case. And at the least, they are now using that design on field again (potentially to help reinforce their ownership and merch rights).

    Curious on your take – but it doesn’t seem like Tennessee really cares about on-field usage of their colors/look. It’s more about the fact they want to keep getting the cash when it comes to selling oilers related gear, and not risking that the value of the IP they own drops for themselves. If Houston just wanted to wear those unis but not sell anything related to them, wouldn’t that weaken Tennessee’s arguments?

    You’re digging deep into the question. The two leading considerations in assessing a likelihood of confusion are the similarity of the marks (they don’t need to be identical, just confusingly similar, meaning I can’t offer a Gogle or Googol search engine) and the relatedness of the goods or services (again, they don’t need to be identical). Broadly speaking, clothing and football are distinct markets, and someone could, say, call their T-shirt business or clothing printing business Titans without creating confusion with the NFL’s Titans.

    It gets a bit more complicated in this case because the item of clothing is directly related to football. In other words, the marks are, if not identical, at least confusingly similar (that assumes that the Titans have rights in the look and feel of the jersey, a concept that is called trade dress, though it doesn’t apply exclusively to clothes) and the goods/services are more related than initially appears. As I’ve discussed, the Titans’s case has merit and holes. Did they have rights? Did they abandon rights? Which rights? How relevant is that abandonment? (Answers – probably, though more trade dress rights than rights in a particular color; probably, at least in connection with football, and if they stopped selling jerseys, maybe all rights; and unclear, because if they maintained rights in clothes that could have some impact, though what impact is hard to say, since at that point the rights kind of reverted to something closer to merely rights in relation to clothing).

    Trademarks are, by their very nature, economic rights. In the US, you can only gain rights in a trademark if you are selling a product under the trademark. And to a degree, a trademark owner has discretion in deciding whether to and when to enforce its rights. So why would the Titans care less about onfield usage (the service mark, if you will) than merch (the trademark) – money.

    You’re right that over time, on field usage could impact any rights the Titans have. Ask the owners of the former trademarks aspirin, yo-yo, and zipper. Or current trademarks at risk, like Band-Aid, Kleenex, or (to a lesser degree at the moment), Xerox. But that loss of rights takes some time, and the memory (and love) of the Oilers is likely to fade over that time, as well. That is, the Titans may just not care about that eventual loss (though the fact that they have been enforcing their rights to some degree says otherwise).

    Without any legal expertise here I could the see the Titans having a defensible position about the specific uniform UH wore last season, as it was essentially the Oilers uniform, stripe patterns and all. But if UH simply wants to add columbia blue to their school colors and wear columbia and red uniforms, how does one hold the copyright on a color combo?

    I think it would be as easy and getting that color code, go one step lighter or darker and problem solved. Or, if you just want to stick it to the No Fun League, rub the current set in their face :)

    Tennessee Titans Anish Kapoor

    Dumb stranglehold over a colour

    I didn’t understand the legal ramifications of this at the time, and I still don’t…how can anyone copyright or claim intellectual property over a color? It’s not like they’re putting the oil derrick on their helmet or commandeering the “Luv Ya Blue” slogan. It’s just a color. What’s the NFL going to do next, send a cease-and-desist to Manchester City? The whole thing is just stupid.

    And if there IS legal ground for the NFL, then UH should just adjust the Pantone by a single number, indistinguishable to the naked eye, and go forward anyway.

    The NFL and the Titans/Oilers look ridiculous and small-time pursuing this as an issue.

    The City of Houston should sue the Titans for taking the Columbia Blue to another city. Yeah, come to think of it that sounds stupid. Almost as stupid as the Titans and the NFL threatening to sue the University of Houston from using this color.

    The part of this whole thing that confuses me is that the Chargers, Panthers, and Lions (to some extent) all wear light blue primary home jerseys. Even in the UFL, the Arlington Renegades uniforms are light blue and red, and they even play in the same state.
    It seems a little crazy that teams from Houston are apparently the only entities subject to this trademark restriction.

    I love it and a random thought but Nike has done “city connect” jerseys better for college teams then they have for any pro team, with the Houston’s uni’s and SMU’s Dallas uni’s immediately coming to mind.

    Even with altered helmet and pant designs, I wouldn’t be surprised if the Titans and the NFL stepped in again just to be petty. I can’t wait to see the uniforms that come out of this.

    Not to be Mr. Party Pooper, but the University of Houston is a public school. This feels like it’s setting up for a huge waste of public funds for an unnecessary legal battle.

    “Pezman also told the Chronicle that the school is making one concession: It’s modifying the helmet and pants striping to make the uniform less Oilers-y.”

    Less Oilers-y? Watch them just throw a Titans logo on the helmet with no alterations. “City city of Houston has had a letter ‘T’ in its name much longer than Titans have had that logo.”

    This doesn’t hurt The Titans and Titans fans dont really give a shit. You can only partake is “color” ownership if you are part of the league. It actually burns The Texans yet again, because once again, they are the ones who can’t wear the colors..

    So why is it the titans have a problem with Houston wearing it but haven’t said a thing about rice wearing a different variation of the oiler looks

    I suspect that this indeed hinges on the Columbia + red combo. Rice used Columbia + navy. UH used Columbia + red. UH was the one to get threatened.

    It also explains why Chargers blue and Honolulu blue are not at issue. Well, we know the real reason is that the Adamses have a vendetta against the people of Houston alone. But their lawyers will say that Chargers blue and Honolulu blue are not at issue simply because they are not used with red. The NFL can’t let this infighting spread without limit.

    Good. The Adams family doesn’t own the rights to Columbia blue.No one is going to confuse the Cougars with the Oilers. We all know the Oilers left. Same as no one is going to confuse the Tennessee Titans with the former New York Titans.

    You also have to love the fact that the Jets had the rights to the name Titans and let Tennessee have the name for free, I believe. Despite this, they try to control any and all use of the Oilers brand.

    I really don’t understand why the Titans are allowed to keep the Oilers intellectual property.

    In no universe should an RGB combination be considered “intellectual property”. Good f’ing grief.

    When any sports league needs a scapegoat or a fall guy, its Houston franchise is seen as an easy sacrifice because we’re not a “real” community, just a bunch of hustlers who moved to a exurban hellhole for low taxes and oil jobs.

    Change NBA rules because a Rocket is too good at something? It’s happened a couple of times.

    Make the Astros a scapegoat while ignoring sign-stealing by everyone else, especially MLB’s biggest money teams in Boston, Los Angeles and The Bronx? No-brainer.

    If we were as small as Cleveland, oh no, everyone would feel sorry for us because we’d be a “real community” with “blue-collar fans”. We’re the biggest city that can safely be used as a scapegoat, and the smallest city that no one loves.

    I think the NFL’s grievance is less towards the colors and more with the overall look. The look with the stripes could confuse people and make them think the Cougars are or are affiliated with the Oilers/Titans.

    Good! Those uniforms are fantastic. Not their fault like Titans choose to look awful and texans choose to look mid

    You can trademark a color.
    Since 1998, the Tiffany Blue color has been registered as a color trademark by Tiffany & Co. It is produced as a private custom color by Pantone, with PMS number 1837, the number deriving from the year of Tiffany’s foundation.

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