UND: Trade name registration won't block nickname progress

GRAND FORKS – While one man has taken it upon himself to keep the University of North Dakota from being able to choose a new nickname, university officials say his efforts are in vain.

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North Dakota Secretary of State Al Jaeger said when former Bismarck Mayor Marlan "Hawk" Haakenson registered the trade names of Fighting Hawks, Nodaks and North Stars on Monday they were treated just like any other filing.
"We have to take it at face value in terms of once the name is filed, it's filed," he said.

The three trade names are also options UND is considering as a future nickname, and Haakenson told the Bismarck Tribune he registered them to keep them from UND.

But UND spokesman Peter Johnson said UND will continue doing business as the University of North Dakota, not its nickname, and therefore it doesn't need the trade name registration.

"A nickname is not a trade name, unless the nickname serves as the identity of the individual or organization," Johnson said. "This will not be the case for us. We do business under the 'University of North Dakota.'"

Jaeger said it's important to note trade names apply to words, typically the name of a business, and trademarks apply to "marks," such as a logo.

The school retired its Fighting Sioux name in 2012 after the NCAA threatened sanctions and after a year of work by two committees, Fighting Hawks, Nodaks and North Stars are going forward for a public vote alongside Roughriders and Sundogs.

Johnson said he didn't know if UND had ever registered Fighting Sioux as a trade name but the only one currently on the secretary of state website is for the Fighting Sioux Club, now known as the Champions Club.

A consulting firm hired by UND took a preliminary look into legal issues that could arise in obtaining a name, but the university was responsible for a more comprehensive analysis, Johnson said.

Haakenson registered the three names under the personal real estate category, but Jaeger said that's irrelevant should UND, for any reason, pursue those trade names, as they wouldn't be able to get them.

Jaeger said he wasn't surprised UND didn't register any trade names as they in general aren't widely talked about, but he also didn't know if UND in fact actually needed the trade name registration.

"I'm sure they realized there were going to be people out there who would try to reserve names and say, 'OK UND, I'll let you have it but you'll have to pay me,'" Jaeger said. "It doesn't surprise me nobody thought about this as something they could do."

Jaeger said registering a trade name costs $25.

Different forms of "roughrider" are used in several trade names registered in the state, and the name is used by Red River High School in Grand Forks. Its principal, Kris Arason, said in June he wasn't opposed to UND using the name. Sundogs is also used by several entities, including a clothing company.

Johnson said the university's attorneys aren't worried and the public vote will continue as planned.

"UND is our trade name so what the former mayor did he certainly can do, but it doesn't affect what we need to do," he said.

At first glance

Kelly O'Keefe was hired as a consultant with the firm PadillaCRT to work with the committees that narrowed down a list of nickname possibilities at UND.

When the public submitted thousands of ideas throughout April, the firm did what O'Keefe called a "cursory trademark search" to eliminate ones that were legally unavailable. Then, 1,172 individual nickname ideas were forwarded to the committee for consideration, and once the list had been narrowed down to seven, UND's legal counsel did a thorough review.

O'Keefe said the process was normal, including the possibility of having to take legal steps to attain a name in the future.

"Nobody expected everything to come up completely clean," he said. "It doesn't mean they're not usable. It just means there are legal proceedings that need to happen, and that's normal."

For example, an attorney for the Cedar Rapids, Iowa, Roughriders, a United States Hockey League team, sent a letter to UND's legal counsel April 24 stating the owners of the team have held a federal trademark for Roughriders in hockey since 2012.

The attorney said the intention was to make UND aware of the trademark.

O'Keefe said it was his team's job to do a cursory check but it's normal to have legal counsel representing the school do a deeper dive, something Johnson agreed with.

"Ultimately there are judgements to be made by the legal team about how to pursue trademarks and you want to see judgements made by the legal team representing the institution because they're going to be the most protective of the institution," O'Keefe said.

What's next

Johnson said the only money that has been spent on the legal aspect of the potential new nickname so far is $3,930 that went to the firm that helped UND Assistant General Counsel Jason Jenkins compile a report he presented to the committee in July.

Concrete data wasn't available by press time but Johnson said O'Keefe was paid about $40,000 for all of his work with the nickname committee as well.

Johnson said conversations about spending more money in the future haven't been had yet.

"We're relying on the advice of our attorneys," he said.

This spring, PadillaCRT bought 265 website domain names to keep people from doing what Haakenson did, only online. The endeavor cost $2,197 and was included in the company's contract with UND.

Johnson said UND will wait until a nickname is picked and in use to register a trademark, in accordance with state law. The online public vote is slated to happen in October though an exact date has not been set.