Blacksburg real estate firm gets right to use "Hokie" in company name

A Virginia Tech alumnus sued by the university for using the term Hokie in his real estate business name may not only keep using the moniker, but now gets free tickets to Hokie football home games.

The university sued John Wilburn, and his Blacksburg company Hokie Real Estate Inc., on Oct. 18 in the U.S. District Court for Western Virginia. The university alleged that in using the term "Hokie," Wilburn infringed on the institution’s exclusive right to the "famous Hokies and Hokie trademarks," and asked that the company be ordered to cease using the name and pay Tech’s legal fees and unspecified damages.

Wilburn countersued, claiming the university had perpetrated a fraud on the U.S. Patent and Trademark Office in its application for and use of trademarks. The countersuit asked for monetary damages and other punishments, but was dismissed on grounds that as a state agency Tech is immune to the damage claims.

After months of negotiations, Wilburn seems to have won the upper hand, securing the right to use the Hokie name and receiving tens of thousands of dollars’ worth of university goods and services.

Reached by phone Friday, Wilburn was reluctant to comment on the terms of the agreement, particularly the extras.

"It’s done, it’s settled. I’m just trying to list and sell houses now. That [the suit] was kind of an interruption. Hokie Real Estate is still here," Wilburn said.

Tech spokesman Larry Hincker said university officials got what they wanted from the suit.

"We very clearly own the [Hokie] mark. We control the mark," Hincker said.

Tech settled because "litigation is expensive. For us, it was a business decision," he said.

Precise figures on Tech’s legal fees were not immediately available, but Hincker said they were in excess of $125,000.

Copies of the licensing agreement and the legal settlement, both dated Aug. 10, were obtained Friday by the Roanoke Times through a Freedom of Information Act request.

According to the agreements, Wilburn not only has a license to use the Hokie moniker free of charge, but for five years beginning in 2011 will receive from President Charles Steger’s allotment four free tickets to all home football games and a free parking space near Lane Stadium.

Additionally, Wilburn will receive a 10-year Platinum-level Hokie Club membership normally reserved for Virginia Tech Athletic Fund donors who give $5,000 to $9,999 a year. Hokie Real Estate will receive four free half-page ads in the Virginia Tech Magazine, worth, according to the magazine’s online rate card, about $2,700.

In return, Tech got Wilburn to agree that it owns the rights to the term Hokie, and got a legally binding promise that Wilburn will never seek to register the name Hokie Real Estate with either state or the federal trademark agencies.

Wilburn currently owns a state trademark on the name Hokie Real Estate that expires in May 2016. According to the settlement, Wilburn agreed to let it expire.

Additionally, Wilburn may transfer ownership of the Hokie Real Estate name if he ever sells the business, although Tech retained limited rights of approval for such a transfer, the agreement stated.

Tech may terminate the agreement if the Virginia Real Estate Board ever revokes Hokie Real Estate Inc.’s brokerage license.

Both parties agreed to pay their own legal fees.

Tech has owned rights to the term "Hokies" since 1998, according to the U.S. Patent database. An owner for "Hokie" is not listed.

A handful of companies established many years ago in Blacksburg — Hokie Spokes, Hokie House and Hokie Hair — continue to use the "Hokie" moniker, under contracts with the university.

Tech officials have said they will not challenge those uses but that no new corporate uses of the name will be allowed.

Before lawsuits were filed, the university declined Wilburn’s request to use the name under a standard licensing agreement.

Written by Tonia Moxley | The Roanoke Times  9/9/11