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The University Of Texas Is Going After A Donut Shop

The hook ’em sign in donut form has been a part of the bakery’s brand for years—but UT lawyers are suddenly unhappy.

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Donut Taco Palace 3, Facebook

Back in 2012, the Internet discovered the existence of the Donut Taco Palace, which is in Austin and exactly what it sounds like. Buzzfeed visited. Shinyribs recorded a song about it. It became a meme. Mostly, people thought the concept of a Donut Taco Palace was funny because many people outside of Texas are unaware that donuts and tacos are both delicious breakfast foods, and deserve to be served in a palace.

In Austin, though, Donut Taco Palace is known less for its name and more for its unique contribution to the pastry arts: the Longhorn, a donut shaped in the familiar pinkie-and-index-finger-up formation of the University of Texas’s “hook ’em.”

The Longhorn donut has been a signature of Donut Taco Palace since 2012. Texas Monthly spoke to co-owner Pisey Seng about her creation of the confection in 2014, and she explained that her hand-shaped donuts come in a variety of forms: a peace sign, a “hang loose” symbol, the three-fingered “I love you” salute, and, to the chagrin of her UT fan patrons, an Aggie “gig ’em” thumbs up.

The donuts, which sell for a reasonable $2 a piece, are suddenly giving Seng some legal trouble. Years after the donuts attracted attention from sports media, they’ve suddenly also caught the eye of UT’s lawyers. As the Austin American-Statesman reported over the weekend, Seng received a cease-and-desist letter from the university in July, citing the school’s trademark.

“While the University appreciates Donut Taco Palace’s enthusiasm, UT is understandably concerned about your use of the LONGHORN Marks in this manner,” the letter said. “We suspect that you were not aware of the University’s trademark rights when you started selling ‘Longhorn Donuts.’ We trust that, now that these rights have been brought to your attention, you will take the appropriate steps to discontinue sales of the ‘Longhorn Donuts’ and refrain from any other uses of the University’s marks.”

Craig Westemeier, senior associate athletics director for trademark licensing at the University of Texas, said in an email that the university receives tips on trademark violations from a variety of sources including alums, fans, staff, faculty, students and anonymous emails. He said the UT brand must be monitored and protected in order to maintain its integrity and value.

“It is an integral part of the trademark law that we protect to regulate the use of and educate the public regarding our rights in these marks. That is our responsibility as a trademark owner,” he said. “We cannot permit the use of our trademarks without providing approval, review and quality control of the item being produced. An inferior product or one that is not properly vetted could hurt the University’s reputation.”

UT has been protective of the “hook ’em” sign, arguing in the past that the university owns the common law rights to the hand symbol dating back to 1955. (In 2013, it brought legal action against a British man who sold t-shirts with the symbol, even though his usage of it was related to heavy metal music. The suit was dismissed after the man dropped his trademark claim for the symbol.)

Putting the index and pinkie finger out on your hand is a symbol that pre-dates the University of Texas’s use in 1955, as you might expect. The manu cornuto devil horns have been in use in Italy and other Mediterranean countries for centuries as a semi-offensive gesture (if it’s pointed upward) or a superstition (if it’s pointed down), and it came to heavy metal culture entirely independent of UT football. John Lennon flashed it on the cover of Yellow Submarine, and Gene Simmons displayed it on the album art for KISS’s 1977 Love Gun. It’s doubtful that the Beatles or KISS had any particular allegiance to the University of Texas, nor did Ronnie James Dio, who began popularizing the symbol when he took over as lead singer for Black Sabbath in 1979.

MELBOURNE, AUSTRALIA-AUGUST 10: Ronnie James Dio performs on stage with Heaven and Hell during their Heaven and Hell 2007 tour at Rod Laver Arena on August 10, 2007 in Melbourne, Australia. Heaven and Hell is a musical collaboration featuring Black Sabbath members Tony Iommi and Geezer Butler along with former members Ronnie James Dio and Vinny Appice. (Photo by Robert Cianflone/Getty Images)

For those who don’t know much or care about UT football, Dio has long been credited as the originator of the symbol. In 2001, he was interviewed by the website Metal-Rules.com about the devil horns symbol—which, among metal fans, had come to mean “Hail Satan”—and he denied credit for inventing the idea of extending your pinkie and index finger, noting the Italian superstition. He did, however, identify the idea of a sort of common law trademark behind the image, even if he seemed to intuitively understand that taking legal action around it would be ridiculous.

 I doubt very much if I would be the first one who ever did that. That’s like saying I invented the wheel, I’m sure someone did that at some other point. I think you’d have to say that I made it fashionable. I used it so much and all the time and it had become my trademark until the Britney Spears audience decided to do it as well. So it kind of lost its meaning with that. But it was…. I was in Sabbath at the time. It was a symbol that I thought was reflective of what that band was supposed to be all about. It’s NOT the devil’s sign like we’re here with the devil. It’s an Italian thing I got from my Grandmother called the “Malocchio.” It’s to ward off the Evil Eye or to give the Evil Eye, depending on which way you do it. It’s just a symbol but it had magical incantations and attitudes to it and I felt it worked very well with Sabbath. So I became very noted for it and then everybody else started to pick up on it and away it went. But I would never say I take credit for being the first to do it. I say because I did it so much that it became the symbol of rock and roll of some kind.

That’s probably a reasonable way to approach that kind of common law trademark—it was Dio’s, but it also belonged to the world, and he could recognize that. But Dio had no financial stake in the devil horn as a symbol, while UT sells all sorts of “hook ’em”-themed merchandise. If anybody can just go out and sell their own stuff with “hook ’em” on it, that’d be trouble for the university’s bottom line.

Still, questions linger. Selling t-shirts in burnt orange with the “hook ’em” symbol reasonably infringes on the ability of the school to make money. That would be likely to confuse potential consumers who expect that, if it’s orange, it’s being sold near a football game, and it’s a piece of apparel that we commonly associate with sports merchandise, it’s probably got the UT stamp of approval on it. Donuts, on the other hand, are not really within the purview of University of Texas athletics, which copyright attorney J.T. Morris pointed out in the Statesman might provide Donut Taco Palace with a way out. “Would a consumer see the doughnut with the Hook ‘Em sign and confuse it with the Texas Hook ‘Em sign to the point the consumer would think those doughnuts were affiliated with the university or that the university is endorsing those Hook ‘Em-shaped doughnuts?” he asked.

Still, a judge could decide that—or Seng could just decide that trying to battle the University of Texas’s lawyers would be a real challenge for the owner of a donut/taco shop, and acquiesce to UT’s demands to avoid the legal fight. Currently, the donut is being sold as “El Toro” on Saturdays and Sundays. It’s not clear if even re-branding donuts shaped like a hand with the pinkie and index finger extended as, say, “Ronnie James Dio-nuts” or “Hail Satan” would satisfy the lawyers, or if the university would continue to throw its legal weight in her direction to protect what it believes is a common law trademark on extending certain fingers of your hand.

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  • csw

    Shame on you University of Texas!!! The eyes of Texas are upon you!!

    • Notsuoh

      Shame on trademark law. UT is required to pursue ALL cases of trademark infringement in order to maintain its claim; if it knowingly allows the doughnut shop to use the trademark without its permission, then UT would have greater difficulty defending its trademark from a more substantial violator. The solution is to reform trademark law, not to get angry at UT for defending itself.

      • JBatchelor

        I’d bet the bigger issue wasn’t actually the hook ’em sign but calling them ‘Longhorn Donuts’. Longhorn is a clearly registered trademark owned by UT. But once she violated one trademark they had to go after the other as well.

        • Kozmo

          What, their are no other “Longhorns” anyplace else in the country? (Or have they all been sued out of existence?)

          This ought to be fair use. You can’t trademark a hand gesture.

      • Cassandra Atticum

        They don’t have to pursue every reported violation. Surely they could just determine that it didn’t actually infringe on their trademark because no one could really confuse them with the University or think that their donuts actually were endorsed by the University. Or they could ask them to stop calling them Longhorns.

      • JP

        I suspect if this went to court all the evidence would be found to have been eaten. I hear those doughnuts are tasty. 🙂

      • Palmer

        If UT doesn’t sell donuts how can this been an infringement of the trademark on their silly hand sign and their ability to make money from it?

  • Hungrytexan

    I think they could figure an appropriate response donut….With only one finger raised. Are you kidding me???

    • Don Morran

      Hook ’em Unicorns

    • don76550

      Agree. Or perhaps in the shape of the blond UT bimbo attending a protest with a large dildo on her head. Texans need to know what kind of mindless garbage attends UT

  • Cindy Shephard

    Dumbass greedy lawyers strike again. Make them a middle-finger salute!

    • don76550

      How about a donut in the shape of a sleezy lawyer with a noose around his neck

  • jammerjim

    It should be simple enough to suggest the baker fill out some forms and then the university could give permission to make the doughnuts, perhaps for a nominal fee. I’m sure the gross sales of the whole shop are less than a rounding error to UT.

  • SecedeTexas

    Love that she has changed the name to the “I love you” donut. Universal sign language. Take that UT! She might want to make some special “middle finger” donuts for the firm who sent her the letter. 🙂

  • Tov Henderson

    Screw the University of Texas. While I understand copyright law, this is going overboard. Greed breeds greed, and this is yet another example of that.

  • Kozmo

    The sign is made in the movie “Alfred the Great” (1969) by a pagan Dane as a sign of contempt for the Christian Anglo-Saxons. Maybe good ol’ UT should sue those filmmakers or studio, too.

    UT jerks. They think they can copyright symbols, colors, slogans, and gestures. I hope someone puts them in their place. But then, what would their battalion of staff lawyers do to justify their phoney-baloney jobs?

    If UT could copyright the letters “U” and “T”, they would do it and sue everyone else on the planet.

  • peemster

    “…the UT brand must be monitored and protected in order to maintain its integrity and value.” Unfortunately, they undermine that very integrity by strong-arming small business owners. Strategically, it seems to me that this sort of action does more damage than good as UT comes across looking like a money-grubbing bully.

  • Dave In Austin

    The ongoing greed and avarice of UT makes me want to extend a different finger symbol in UT’s direction. And after the last few football/basketball/baseball seasons I am not sure exactly how valuable the UT brand is anymore.

    Leave the poor woman alone and let her make donuts. I can’t see how that diminishes the UT brand, and neither can their lawyers except for the fact that they are not getting 35% of each donut so we can overpay all of our football/basketball/baseball coaches.

    UT, this finger’s for you!

  • BriteBlonde1

    Every morning, the craziness of Texas makes my SMU heart happy I vacated residency before it all became Moon Dog Howling Mad. This story cements my disdain for lawyers as well. BTW, the person who should sue is Charlie Schreiner who registered the name Texas Longhorn in 1913. All those drunk kids running around Austin during football season owe him money!

  • tyler

    wow so tacky going after a momnpop donut shop hahaha. even if they did “own” the hand symbol, which they don’t, aren’t the donuts just a silly gesture about spreading longhorn pride and being part of the UT community? so lame.

  • JP

    I thought that was the ‘devil’s hand sign’ and was going to order some for management. 🙂

  • planojoe

    So if UT is so concerned about maintaining its TM, then license the shop at a nominal cost.

  • SuperTroll

    The law is what the law is. But it should not be legal to trademark single common words like “Longhorn”. I can maybe accept trademarks for phrases like “Texas Longhorns”. I think I’m just going to copyright the dictionary and you’ll all have to pay me royalties when you talk.

  • Rachel Flanagan

    Disappointed to goliath UT going after Ma & Pa Bakery for a hand gesture that’s been around WAY before UT.
    Someone needs to remind UT Lawyers this is Austin where we support local businesses, not sue them for infringing on a hand gesture UT didn’t invent, but adopted as their own ERGO the copy right.

    Dio’s two-finger gesture – what does it mean? – BBC
    “Bram Stoker mentioned it in his novel Dracula, published in 1897. In the first chapter, protagonist Jonathan Harker notes the following in his journal while in Eastern Europe’s Carpathian Mountains:
    “When we started, the crowd round the inn door, which had by this time swelled to a considerable size, all made the sign of the cross and pointed two fingers towards me. With some difficulty I got a fellow-passenger to tell me what they meant; he would not answer at first, but on learning that I was English, he explained that it was a charm or guard against the evil eye.” This superstitious belief is especially common in Italy, but it is also shared in other countries. In southern Italy, it can also be directed at a man whose wife is thought to be unfaithful, so it should be exercised with great care.

    “It is the American sign for ‘I love you’,” says Sarah Murray of the British Deaf Association.


  • M Ann Brown

    Yeah……because with ALL their oil wells, UT still needs that extra income. What Hogwash! BOOOOO, UT.

  • Michael Gibson

    I am a Texas fan and I can’t believe they’re going after a donut shop. There is no way at all that I would ever think that there was some kind of official Longhorn donut. Are they kidding? I hope the donut shop fights them and I hope there are attorneys who will help them pro bono. Sometimes you just have to fight for what’s right and UT is wrong.

  • Lemp

    The bakery item for some shops become unique in its standard and quality. Many people love to sue such item and its become a sign for their sale. The standard and quality leads them no. one in the area. The quality liked by people and they travel long distance for such purchase. the profit for such organization move ahead.