December 08, 2014

Oklahoma State University and New Mexico State University Call It a Draw

by Stites & Harbison, PLLC

Oklahoma State University and New Mexico State University have holstered their pistols and called their dispute over Pistol Pete a draw. Less than two months ago, Oklahoma State University filed a lawsuit against New Mexico State University for trademark infrigement over New Mexico State University's "Classic Aggie" mascot mark. The lawsuit alleged that New Mexico State University's "Classic Aggie" mark is likely to cause confusion with the Oklahoma State University "Pistol Pete" mark.

Osu Nmsu

Classic Aggie on the left; Pistol Pete on the right

Oklahoma State University owns incontestable federal trademark registrations for its Pistol Pete marks. Apparently the gun-toting, mustachioed mascot was based on Stillwater, Oklahoma-area, real-life "lawman" Frank Eaton. This arguably famous Pistol Pete mark has been used by Oklahoma State University continuously since its creation in the 1920s. Eaton got the nickname "Pistol Pete" by practicing his shooting skills in Oklahoma, and "Pistol Pete" is said to have won a legendary gunfight at some point in Albuquerque, which is why New Mexico State University also wants Pistol Pete as its mascot.

Frank Eaton

Frank Eaton. See the resemblence between old Frank and Pistol Pete?

Oklahoma State University claimed that it had repeatedly asked New Mexico State University to cease use of the old Classic Aggie mark, but New Mexico State University refused to do so. When New Mexico State University claimed Pistol Pete as its mascot about 50 years ago, the university paid royalties to Oklahoma State University. However, New Mexico State University revamped its version of the Pistol Pete mascot and stopped paying royalties. While the modernized "Classic Aggie" is the version of Pistol Pete most used by New Mexico State University, that old version is apparently still around and still used on a number of products and in connection with a number of services.

Despite this, New Mexico State University was surprised to learn that it had been sued by Oklahoma State University over the cowboy character. In fact, shortly after learning of the lawsuit, it issued the following statement:

"We have just learned that OSU has filed a lawsuit claiming it has exclusive rights to the character some call Pistol Pete and which we here at NMSU call Classic Aggie. The basic character has served as mascots for both schools â OSU and NMSU â for many decades. We were surprised that OSU took this step, but are in communication with its legal and academic representatives and are confident that good sense will prevail and that this court action will lead to an agreement that will allow both schools to carry on their respective uses of characters that are part of their academic and athletic traditions."

It seems that good sense did, in fact, prevail this week. The university entered into a license agreement, which allows New Mexico State University to use its version of the mascot on a select number of items by paying Oklahoma State University the nominal licensing fee of $10 per year. Per the agreement, New Mexico State University will be able to sell a maximum of 3,000 items per year bearing the the Classic Aggie image. These items can be only sold only at the New Mexico State University, through the bookstore's website. New Mexico State University is also permitted to gift items bearing the Class Aggie image through the alumni relations office, so long as the total number of products sold and/or gifted bearing the Aggie image does not exceed 3,000. So, consider yourself lucky if you get one of these limited Classic Aggie items. New Mexico State University also agreed that it will not use the image in connection with its athletic programs or student recruitment.

NMSU President Garrey Carruthers issued the following statement:

"We appreciate our friends at Oklahoma State University and their willingness in helping to resolve this dispute. The Classic Aggie is a piece of NMSU nostalgia and this agreement allows us to continue using our Classic Aggie on items that might be appealing to our alumni and the NMSU community."

It seems this duel is over and the sun has set on this showdown. However, the question of how confusion is averted remains. In case you're unfamiliar with the history of Pistol Pete, here's a little something Oklahoma State University put together a few years back to showcase its beloved mascot:

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