Oakwood University Inc v. Oakwood University Alumni Association

Filing 67

MEMORANDUM OPINION- For the reasons stated above, by separate order, the Court will issue a preliminary injunction that prevents the Alumni Association from using the Oakwood University mark. Signed by Judge Madeline Hughes Haikala on 8/14/2020. (KEK)

FILED
2020 Aug-14 PM 04:36
U.S. DISTRICT COURT
N.D. OF ALABAMA

IN THE UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ALABAMA
NORTHEASTERN DIVISION
OAKWOOD UNIVERSITY, INC.,

)
)

Plaintiff,

)
)

v.

)

Case No. 5:18-cv-870-MHH

)
OAKWOOD UNIVERSITY
ALUMNI ASSOCIATION,

)
)
)

Defendant.

)
MEMORANDUM OPINION

Family disagreements are painful for everyone involved. This case concerns
a disagreement between Oakwood University and its offshoot and former ally, the
Oakwood University Alumni Association.

Recently, the relationship between

Oakwood University and the Oakwood University Alumni Association has become
strained -- so strained, in fact, that Oakwood University has broken its ties with the
Oakwood University Alumni Association. The Court’s efforts to help the parties
mend their relationship have been unsuccessful, so the time has come for the Court
to resolve some of the pending motions in this case. This opinion addresses the

University’s request for a preliminary order prohibiting the Alumni Association
from using the trademark “Oakwood University” in the Association’s name and
from using other marks that may cause alumni and others to confuse the University
and the Alumni Association, especially with respect to alumni giving.
Oakwood alumni always have had good reason to support Oakwood
University.

Oakwood University is one of Alabama’s storied educational

institutions. As the University explains on its website:
Oakwood University, in Huntsville, Ala., was founded by the Seventhday Adventist Church (SDA) in 1896 to educate the recently-freed
African-Americans of the South. Drawing upon its Christian faith and
the emancipation of slaves by President Abraham Lincoln in 1863, it
believed that “all people are created equal” and deserved the
opportunity to learn a trade.
Originally, the school was called “Oakwood Industrial School,”
opening its doors November 16, with 16 students. A year earlier, the
380-acre former slave plantation was purchased for $6,700. Its
towering oak trees – which gave way to the name “Oakwood” – dotted
the early residence of America’s most famous slave, Dred Scott.
Additional land was acquired in 1918, nearly tripling the campus size
to its current 1,186 acres.1
Since its founding, the University has expanded not only its campus but also its
student body and curriculum, evolving from an industrial school to a university
offering more than 58 majors and accredited “to award associate, baccalaureate, and

1

OAKWOOD UNIVERSITY: MISSION & HISTORY, https://www2.oakwood.edu/our-story/missionhistory/ (last visited July 30, 2020); see also Doc. 1, p. 5.
2

master’s degrees.”2 Oakwood University “offers quality Christian Education that
emphasizes academic excellence, promotes harmonious development of mind, body,
and spirit, and prepares leaders in service for God and humanity.” 3
Alumni of the University have much to celebrate:
Oakwood is consistently recognized by national media, business and
educational associations. US News and World Report ranks it
perennially among the nation’s “Best Colleges,” both in terms of the
“Historically Black Colleges and Universities” (HBCUs) and
“Regional Colleges/South” categories; the magazine also ranks
Oakwood among the top ten HBCUs with highest graduation rates. In
its first-ever HBCU ranking, the September 2012 EBONY Magazine
top-ranked Oakwood’s science program. Additionally, Oakwood is the
nation’s fifth-ranked producer of undergraduate black applicants to
medical schools, according to the Association for American Medical
Colleges. Oakwood’s ISO 9001: 2008 designation distinguishes it as
the first and only HBCU, as well as the first and only Alabama and/or
SDA higher education institution, so qualified. 4
Oakwood University embraces its alumni:
Enter to Learn. Depart to Serve.
Every Oakwoodite knows this motto and lives it every day! We are
proud of you and it is our pleasure to serve YOU.

2

OAKWOOD UNIVERSITY: OUR STORY, https://www2.oakwood.edu/our-story/ (last visited July 30,
2020).
3

OAKWOOD UNIVERSITY: MISSION & HISTORY, https://www2.oakwood.edu/our-story/missionhistory/ (last visited July 30, 2020);
4

OAKWOOD UNIVERSITY: MISSION & HISTORY, https://www2.oakwood.edu/our-story/missionhistory/ (last visited July 30, 2020); see also Doc. 1, p. 5.
3

Alumni Relations is here to keep you connected to the school you love
and to the people you cherish. We know the connections made here are
for a lifetime. 5
Given Oakwood University’s history, mission, and rich tradition of
accomplishment, it comes as no surprise that Oakwood alumni are deeply invested
in their school and are proud of the bonds they share as alumni. And it comes as no
surprise that both the University and the Alumni Association wish to foster those
bonds and cement their relationships with alumni. “What’s in a name?” 6 A lot,
when it comes to alumni relations. To resolve the pending motions concerning
Oakwood University’s effort to prevent the Alumni Association from using
“Oakwood University” in its name, the Court first will make factual findings
concerning the evidence presented by the parties. Then the Court will examine
whether the University has demonstrated, among other things, a substantial
likelihood of ultimate success on the merits of its trademark infringement claim and
a substantial threat of irreparable injury if the Alumni Association continues to use
the name “Oakwood University.”

5

OAKWOOD UNIVERSITY: ALUMNI, https://www2.oakwood.edu/alumni/ (last visited July 30,
2020) (emphasis is from the University’s website).
6

William Shakespeare, Romeo and Juliet (Act II, Scene ii).
4

I.

FINDINGS OF FACT
In accordance with Rule 52(a)(2) of the Federal Rules of Civil Procedure, the

Court makes the following findings of fact: 7
A. The Creation and Evolution of the University and the Association
Oakwood University, Inc. is an Alabama non-profit corporation with its
principal place of business in Madison County, Alabama. The University is a
tax-exempt institution and accepts contributions from donors. (Doc. 1, pp. 2, 8, ¶¶1,
17; Doc. 15, pp. 1, 4, ¶¶1, 17).8 Alumni represent a significant segment of the
University’s donor base. (Doc. 1, p. 8, ¶17).
The University launched operations in 1896 as “Oakwood Industrial School.”
(Doc. 15, p. 20, ¶7; Doc. 20, p. 3, ¶7).9 In 1904, “Oakwood Industrial School”
7

Rules 52(a)(1) and (2) provide:
(1) In General. In an action tried on the facts without a jury or with an advisory
jury, the court must find the facts specially and state its conclusions of law
separately. The findings and conclusions may be stated on the record after the
close of the evidence or may appear in an opinion or a memorandum of decision
filed by the court. Judgment must be entered under Rule 58.
(2) For an Interlocutory Injunction. In granting or refusing an interlocutory
injunction, the court must similarly state the findings and conclusions that
support its action.

Fed. R. Civ. P. 52 (a)(1)-(2).
8

Doc. 1 is the University’s verified complaint. The Alumni Association admitted these factual
allegations in its Answer and Counterclaim, Doc. 15.
9

The citation references the Alumni Association’s factual allegation in the Answer and
Counterclaim (Doc. 15) which the University admitted in its Answer to the Counterclaim (Doc.
20).
5

changed its name to “Oakwood Manual Training School,” and then, in 1917,
changed its name again to “Oakwood Junior College.” (Doc. 15, p. 20, ¶7; Doc. 20,
p. 3, ¶7; Doc. 40-1, p. 1, ¶4).
In 1926, the graduating class of Oakwood Junior College formed an alumni
association called the Oakwood Junior College National Alumni Association. (Doc.
15, p. 20, ¶8; Doc. 40-1, p. 1, ¶4). The alumni association’s mission was to serve
and support the college with fundraising, student recruitment, and other activities.
(Doc. 40-1, p. 1, ¶8). Before the early 1960s, the college housed, sponsored, and
subsidized the alumni association’s operations. (Doc. 40-1, p. 1, ¶5). The new
alumni association conducted its business on campus through employees and staff
of the college. (Doc. 40-1, p. 1, ¶4). Until 1964, the president of the alumni
association was a faculty or staff member of the school. (Doc. 40-1, p. 1, ¶5).10
Since 1964, all but one of the twelve alumni association presidents have served from
off campus. (Doc. 40-1, p. 1, ¶5). The trend of off-campus leadership began by
agreement between the college and the alumni association. (Doc. 40-1, p. 1, ¶5).
In 1943, Oakwood Junior College changed its name to “Oakwood College.”
(Doc. 15, p. 20, ¶10; Doc. 20, p. 3, ¶10). That year, the alumni association also

10

The first president of the alumni association was O.B. Edwards. President Edwards served in
that role from 1926 through 1939. (Doc. 40-1, p. 1, ¶4). Over his career at the college, Mr.
Edwards served as a professor and as vice president for academic affairs. (Doc. 40-1, p. 1, ¶4).
6

changed its name to the Oakwood College Alumni Association. (Doc. 15, p. 20,
¶11). 11 Like Oakwood Junior College, Oakwood College assisted in the formation
and operation of the alumni association. (Doc. 40-1, p. 1, ¶5). Oakwood College
recognized the alumni association would use the school’s name, logos, symbols, and
color schemes in connection with fundraising for the college. (Doc. 40-1, p. 2, ¶11).
For instance, the alumni association used Oakwood College’s seal on its stationary.
(Doc. 40-1, p. 2, ¶11). The college gave the alumni association permission to use
the school’s name, logos, symbols, color schemes, and good-will in connection with
an “unwritten understanding” the alumni association would raise funds for the
college. (Doc. 40-2, p. 2, ¶8). 12

11

Doc. 15 is the Alumni Association’s unsworn Answer and Counterclaim. The University lacked
sufficient information to admit or deny the fact stated. (Doc. 20, p. 3, ¶11).
12

This fact comes from the declaration of Jennifer Mosley Stone which Oakwood University has
offered in support of its request for a preliminary injunction. (Doc. 40-2). The record also contains
the declaration of Eardell J. Rashford, which the Alumni Association has offered in opposition to
the University’s motions. (Doc. 41-2). In his declaration, Mr. Rashford states that, “[t]o [his]
knowledge,” neither Oakwood College nor the University restricted or controlled the alumni
association’s use of the University’s trademarked symbols or entered into an agreement with the
alumni association for their use, and to his knowledge, “there has never been a formal written or
unwritten agreement between the University and OUAA regarding the use by OUAA of “Oakwood
College” or “OCAA.” (Doc. 41-2, p. 3, ¶¶6–7). The Court credits Dr. Stone’s description of the
relationship between the college and the alumni association because her assertions are rooted in
her personal knowledge and experience in 20 years of service to the Alumni Association in various
leadership roles including President and Vice-President of the Alumni Association. (Doc. 40-2,
p. 1, ¶¶2–3). Mr. Rashford seems to have played a more limited role, serving as the parliamentarian
to the Oakwood College Alumni Association Board of Directors before the college developed into
the university, and the OCAA became the OUAA. (Doc. 41-2, p. 1, ¶2). Mr. Rashford does not
state directly that there was no agreement between the parties or that the college did not give the
association permission to use the college’s marks. He simply states that he does not have personal
knowledge of that permission.
7

In 2007, the University changed its name from “Oakwood College” to
“Oakwood University.” (Doc. 1, p. 5, ¶9; Doc. 15, p. 2, ¶9).13 In 2010, the alumni
association became known by its present name, the Oakwood University Alumni
Association. (Doc. 15, p. 21, ¶13; Doc. 40-2, p. 1, ¶2). 14 Oakwood University
continued to give the alumni association permission to use the school’s name, logos,
symbols, color schemes, and good-will in connection with the “unwritten
understanding” the alumni association would raise funds for the university, and the
university would coordinate fundraising efforts. (Doc. 40-2, p. 2, ¶8, 12).15
The University’s accreditation is contingent on its oversight of fundraising
benefitting the University. The University is accredited by the Southern Association
of Colleges and Schools Commission on Colleges (SACSCOC) and must comply
with the core requirements and standards of SACSCOC. (Doc. 40-3, p. 1, ¶3). Dr.
Belle S. Wheelan, the current president of the SACSCOC, has explained:
5. All SACSCOC accredited institutions must maintain compliance
with the current edition of the Core Requirements and Standards
13

Doc. 15 is the Alumni Association’s unsworn Answer and Counterclaim. The University lacked
sufficient information to admit or deny the fact stated. (Doc. 20, p. 4, ¶13).
14

The Oakwood University Alumni Association is a separate legal entity from the University.
(Doc. 41-1, p. 2, ¶5; Doc. 41-3, p. 2, ¶3; Doc. 41-4, p. 3, ¶7). Since at least March 1991, the IRS
has recognized the Alumni Association as a tax-exempt entity pursuant to section 501(c)(3) of the
Internal Revenue Code, distinct from the University. (Doc. 41-1, p. 2, ¶¶3, 4; Doc. 41-1, p. 9).
15

In her declaration, Dr. Stone stated: “At all times (including when I was Vice President and
President of OUAA), the OUAA had an unwritten understanding with the University. As part of
this understanding, OUAA had the University’s permission to use its name, logos, symbols, color
schemes, and good will in connection with OUAA’s fund-raising efforts for the University.” (Doc.
40-2, p. 2, ¶12).
8

contained in the Principles of Accreditation: Foundations/or Quality
Enhancement (“Principles”). Noncompliance with Core Requirements
and Standards could jeopardize the institution’s accreditation status.
6. The Principles Section 5: Administration and Organization (Section
5), addresses the role and responsibilities of institutional administrative
officers. Specifically, Section 5.2.c governs the role of the chief
executive officer regarding fundraising (Principles, Section 5.2. c) and
Section 5.3.c, governs the exercise of control of ‘institution-related
entities’ engaged in fundraising activities. Principles, Section 5.3.c.
7. Section 5.3.c of the Principles (“Section 5.3.c”) requires a member
institution to exercise sufficient control over the fundraising activities
of “institution-related entities.”
Principles, Section 5.3.c. An
institution-related entity is one organized separate from the SACSCOC
member institution; but, whose purpose is to raise funds to support that
institution and its programs. The Standard requires that any such entity
must be subject to the control of the institution when engaging in fundraising activities to support the institution or its programs. An alumni
association organized separately from a member institution is a
common example of an institution-related entity.
8. A member institution can exercise the required level of control over
institution-related entities in one of two ways. First, the institution
demonstrates, through the CEO or his/her designee, control of any
fund-raising activities of the institution-related entity. Second, the
institution may enter into a formal, written agreement that governs the
fund-raising activities on behalf of the institution, assuring that the
fund-raising activities further the mission of the institution.
9. Even if an institution and institution-related entity have entered into
a formal, written agreement as evidence of compliance with Standard
5.3.c, compliance requires that the institution demonstrates control of
the institution-related entity’s fund-raising activities undertaken to
support the institution or its programs.
10. If an institution-related entity raises funds for the institution
without operating under that institution’s control, as set out in
Section 5.3, it would appear noncompliant with the Principles of
Accreditation and jeopardize the institution’s accreditation status.
9

11. Section 1 of the Principles (“Section 1”) mandates that integrity,
openness and candidness permeate all the institutions’ obligations
under SACSCOC accreditation standards. Principles of Accreditation:
Foundation for Quality Enhancement, Section 1: The Principle of
Integrity. The standard is operationalized in a policy statement. A true
and correct copy of SACSCOC’s Policy Statement entitled “Integrity
and Institutional Obligations to SACSCOC” is attached hereto as
Exhibit “A”.
12. As part of the policy of integrity, a member institution must disclose
possible accreditation violations as part of its candidacy or membership
with SACSCOC. When a member institution becomes aware of
anything that potentially impacts its compliance with the Principles, the
member institution must notify SACSCOC (sometimes referred to as
“self-reporting”). Failure to comply with the SACSCOC’s integrity
principle may result in a loss of accreditation for a member institution.
(Doc. 40-3, pp. 1–2, ¶¶5–12; see also, Doc. 41-1, pp. 4, 5, ¶¶10, 11) (emphasis
added).
A memorandum of understanding, or “MOU”, is an example of the type of
formal, written agreement that could define the fundraising activities of an external
entity like the Alumni Association. (Doc. 41-1, p. 4, ¶10; Doc. 41-1, pp. 85, 87).
The University and the Alumni Association have not had an MOU or any other
formal, written agreement concerning the Alumni Association’s fundraising for the
University. (Doc. 41-1, pp. 3, 5, ¶¶7, 12). Therefore, under SACSCOC standards,
the University’s CEO or her designee must control of fundraising activities of the
Alumni Association.

10

According to its bylaws, the Alumni Association has one purpose: “to support
the education institution, Oakwood University, located in Huntsville, Alabama.”
(Doc. 1-3, p. 2). The bylaws state “[t]he membership will support the University
through benevolent giving, scholarships, and recruitment providing financial
support to students and the University through the campaigns of the Association.”
(Doc. 1-3, p. 3). The bylaws also provide that the Alumni Association’s president
“shall communicate continuously with the University officials and the Association
Officers and Elected Officials in order to achieve maximum planning and
coordination between the Association and the University.” (Doc. 1-3, p. 7). From
its inception, for many years, the Alumni Association cooperated with and
coordinated fundraising efforts with the University. (Doc. 1, p. 9, ¶19; Doc. 15, p.
4, ¶19). The Alumni Association collected funds and then, as an organizational
donor, contributed those funds to the University. (Doc. 41-4, p. 3, ¶7). The
University’s president has ex-officio membership on the Alumni Association’s
board of directors. (Doc. 1-3, p. 6).
Dr. Mervin Warren, who served as the president of the Oakwood College
Alumni Association from 1962 to 1963 and has written books about the history of
Oakwood University, recalls conducting the alumni association’s business from the
college’s campus using the college’s resources. (Doc. 40-1, p. 1, ¶¶ 3, 6 & p. 2, ¶9).
Dr. Warren understood “that the association’s fund-raising [sic] was answerable to
11

the College.” (Doc. 40-1, p. 2, ¶10; see also Doc. 40-1, p. 2, ¶12 (“[T]here have
always been discussions between Oakwood University and its alumni association
regarding the purposes and targets of alumni fund-raising [sic].”)). Dr. Warren notes
“the [A]ssociation’s use of the school’s name was indicative of both the Oakwood
University and the . . . Association were operating for the common good.” (Doc.
40-1, p. 2, ¶13).
Dr. Jennifer Moseley Stone, who served as the Alumni Association’s
president from 2012 through 2015, confirms that the Association’s mission “was to
support and raise funds for the University.” (Doc. 40-2, p. 1, ¶¶ 2, 4). While Dr.
Stone was the Association’s president, she understood the University had to be
involved in the Association’s fundraising per SACSCOC accreditation. (Doc. 40-2,
p. 2, ¶9). If there was a difference of opinion between the two organizations, they
would work together to “find common ground or otherwise resolve the difference.”
(Doc. 40-2, p. 2, ¶11). There never was a time during her tenure that the Alumni
Association ignored or defied the University’s directives regarding fundraising.
(Doc. 40-2, p. 2, ¶11).
Dr. Leslie Pollard, the current President and CEO of the University, has
explained that “between 2011 and early 2018, whenever I objected to OUAA
fundraising or materials as conflicting with University standards, OUAA would
comply.” (Doc. 44-1, p. 2, ¶1 & p. 3, ¶9). In her declaration, she states:
12

Based on my experiences, the relationship between OUAA (and
previous associations) and the University (and its predecessors)
included the practice that OUAA would submit a proposed
fundraiser/solicitation to the University for approval before proceeding
with it. This certainly was the case approximately four years into my
Administration when Dr. Cynthia Powell-Hicks became President of
OUAA in 2015. However, shortly after she took office, I learned that
Dr. Powell-Hicks and OUAA had started a new fundraiser effort called
“President’s Fundraiser”, without seeking permission/approval, and
were asking that it be advertised on the University’s website and
newsletter. As soon as I found out about this, I objected to it on various
grounds, including that donors could mistake who was behind the
fundraiser and where funds would go.
(Doc. 44-1, pp. 3–4, ¶10). The Alumni Association then cancelled the proposed
fundraiser and subsequently submitted fundraising proposals for pre-approval by the
University. (Doc. 44-1, p. 4, ¶16). Dr. Pollard states:
When OUAA’s planned fundraising effort/communication met the
University’s standards and expectations, we would approve them.
When a fundraising effort or communication did not meet our
expectations or standards, we would inform OUAA, and it would
comply. For example, in March 2016, I became aware of a fundraising
solicitation suggesting that OUAA and the alumni association of
Oakwood Adventist Academy (a Kindergarten through 12th grade
school located on Oakwood’s campus) were holding a “joint
fundraiser” for the Academy. After I learned of this unapproved effort,
I let Dr. Powell-Hicks know of my objection, and OUAA did not
proceed with the fundraiser.
[] Another example of the University rejecting a proposed fundraiser
and use of the University’s name and good will occurred in 2017. In
January of that year, OUAA informed the University of an idea called
“Oakfest”, which it thought would “revamp” Alumni Weekend. It
wanted to use an outside group called “Superlative Events” as its agent
to run Oakfest. Ultimately, the University rejected the Oakfest concept
and any association with Superlative Events, which advertised events
that appeared to undermine the teachings and message of OU and the
13

Seventh-day Adventist Church. OUAA acceded to the University’s
decision.
(Doc. 44-1, pp. 4-5, ¶¶16-17).
In making these fund-raising decisions, the University has not singled out the
Alumni Association for special treatment. Because of its obligation to comply with
SACSCOC accreditation standards, the University has intervened in fundraising
efforts by other organizations. In 2012, an on-campus ministry group was using the
University’s name in association with the group’s fundraising. The group did not
give the university an opportunity to review and provide input with respect to
fundraising. (Doc. 44-1, p. 4, ¶13). Ultimately, “the Board voted to remove that
ministry from [] campus because their fundraising did not conform to the
University’s accreditation requirements, and was confusing donors and the public.”
(Doc. 44-1, p. 4, ¶13).
B. The Registration of the “Oakwood University” Mark
On August 6, 2008, the University filed U.S. Trademark Application Serial
No. 77/540,675 for the “OAKWOOD UNIVERSITY” mark with the United States
Patent & Trademark Office. (Doc. 1, p. 5, ¶10). Eight months later, the United
States Patent and Trademark Office issued trademark registration number 3,601,698
for “metal key chains; metal novelty license plates” in International Class 6; “desk
blotters, loose leaf binders, notebooks, paper report covers, note paper, pens,
pencils, bookmarks, stickers, decals, postcards, notepad holders, pocket calendars,
14

weekly calendars; stationery, namely, writing paper and envelopes, desk and memo
pads; ink pens combined with holders, adhesive tape dispensers and
paperweights; magazines featuring general interest topics pertaining to a
university, its students and the community” in International Class 16; “backpacks,
book bags, sports bags, bum bags, wallets and handbags” in International Class 18;
“Plastic drinking mugs, plastic cups, metal drinking mugs, drinking

glasses,

ceramic mugs, ceramic drinking cups, ceramic vases, ceramic pitchers” in
International Class 21; “Cloth banners and flags” in International Class 24; “T-shirts,
gym shorts, sweatshirts, sweatpants, athletic jackets, wind resistant jackets, golf
shirts, un-collared shirts, infant wear, neckties, athletic uniforms, sweatbands,
baseball caps, bow ties, sleepwear, rain wear” in International Class 25; and
“educational services, namely, providing courses of instruction on the college and
university levels; entertainment services, namely, live music concerts; entertainment
in the nature of presenting live musical groups, plays, and music and poetry recitals,
and art exhibitions” in International Class 41. (Doc. 1, pp. 5–6, ¶10; Doc. 1-1, pp.
2–3; Doc. 15, pp. 2–3, 21–22, ¶¶10, 16; Doc. 20, p. 4, ¶16). In its application, the
University did not claim the exclusive right to use the term “University” other than
as part of the phrase “Oakwood University.” (Doc. 1-1, p. 2). On January 1, 2008,
eight months before filing its trademark application, the University began displaying

15

this mark in connection with University goods and services on its campus, through
its website, and in retail stores. (Doc. 1, p. 6, ¶11).
C. The “Ancillary Marks”
The University owns the following “Ancillary Marks”: trademark registration
number 3,591,212 for the following stylized mark:

(Doc. 1-2, pp. 2–3); trademark registration number 4,352,439 for the following
stylized mark:

(Doc. 1-2, pp. 4–5); trademark registration number 4,954,242 for the following
stylized mark:
16

(Doc. 1-2, pp. 6–7; Doc. 1, p. 7, ¶15); pending trademark application 87/828,018 for
the following stylized mark:

(Doc. 1-2, pp. 8–14); pending trademark application 87/737,208 for the following
stylized design:

17

(Doc. 1-2, pp. 15–16); and pending trademark application 87/737,193 for the
following standard charter mark: “THE AEOLIANS.” (Doc. 1-2, pp. 17–18; see
also Doc. 1, pp. 7–8, ¶15).
Since January 1, 2008, the University has used the “Oakwood University”
mark and the ancillary marks separately and collectively to identify the University’s
services and to distinguish those services from the services of other educational
institutions. (Doc. 1, p. 8, ¶16). The University prominently displays and uses these
marks on school buildings, letterhead, correspondence, bills, direct mailings, and
school and alumni newsletters, among other things. (Doc. 1, p. 8, ¶16). The
University also regularly uses the Oakwood University mark and ancillary marks in
its fundraising efforts. (Doc. 1, p. 8, ¶17). And the University has monitored others’
use of its marks. Dr. Pollard explained:
18

As part of my role as CEO of the University, I have monitored OUAA’s
fundraising proposals and use of the University’s name, trademarks,
good will, logos, color schemes, etc. to make sure they did not conflict
with the University’s mission, standards or programs or in a way that
could cause confusion.
(Doc. 44-1, p. 3, ¶9).
D. The University Severs Ties with the Association
In 2018, donors to the Alumni Association began to express frustration with
the Association to the University. (Doc. 1, p. 13, ¶¶30–31).16 On February 23, 2018,
the Alumni Association lost its tax-exempt status because the Association did not
file IRS Form 990 returns for the preceding three years. (Doc. 1, p. 14, ¶32). 17 The
following, taken from the verified complaint, is not disputed in the record:
33. Given the gravity of these concerns and the negative public relations
impact these issues could have on fund-raising efforts and SACS
compliance, the University’s Board of Directors (the “Board”)
convened on March 8, 2018. At this meeting, the Board empaneled a
“taskforce,” led by a former President of the University, to look into the
issues and make recommendations intended to protect donors, comply
with SACS 5.3, and to allow the Former Association to navigate
through the upcoming Alumni Weekend with minimal public confusion
and embarrassment.18

16

In its Answer, the Alumni Association stated it lacked knowledge or information sufficient to
form a belief as to the truth of these allegations, and therefore denied them. (Doc. 15, p. 6, ¶¶ 30–
31).
17

The Alumni Association attributes the loss of its tax-exempt status to a clerical error by the
University. (Doc. 15, p. 6, ¶32).
18

In its verified complaint, the University refers to the Oakwood University Alumni Association
as “the Former Association.”
19

34. On March 13, 2018, the Board (through the task force’s report)
requested certain financial information and assurances from the Former
Association, particularly relating to its intended fundraising and the
Alumni Weekend scheduled for later that month . . .
35. The Former Association communicated to the Board that it planned
to submit a response to the Task Force Report by March 20, 2018. With
this understanding, the Board scheduled a meeting for March 21, 2018
during which it intended to review the response. However, the Former
Association informed the Board that it would not be responding by
March 20, 2018, but that the Board would be hearing from the Former
Association’s lawyer.
(Doc. 1, p. 14).
On March 19, 2018, the Alumni Association, through Dr. Powell-Hicks,
reserved the name “Oakwood University Alumni Association” with the Alabama
Secretary of State’s Office. (Doc. 1, p. 26, ¶64; Doc. 15, p. 12, ¶64).19
It is not disputed that the following, taken from the verified complaint, then
occurred:
36. On March 20, 2018, counsel for the University attempted to reach
an understanding with the Former Association’s lawyer . . ..
37. The Board held its March 21, 2018 meeting to discuss the issues
with the Former Association . . . The Board was willing to put off action
concerning the Former Association until after the approaching Alumni
Weekend, but it was not comfortable with the association soliciting or
raising funds from Alumni while its tax-exempt status was revoked.
The Former Association’s President attended this Board meeting and,
among other things, stated that she would not communicate with the
19

See ALABAMA SECRETARY OF STATE BUSINESS ENTITY RECORDS: OAKWOOD UNIVERSITY
ALUMNI ASSOCIATION, (http://arcsos.state.al.us/cgi/corpdetail.mbr/detail?corp=791278&page=name&file=Q&type=ALL&status=
ALL&place=ALL&city= (last visited July 30, 2020).
20

University, instead instructing the Board to direct all future
communications to the Former Association’s legal counsel. The
University followed this directive and its counsel attempted to address
the issues with Defendant’s counsel.
38. Over the course of the next week, the University, through its
counsel, attempted to communicate multiple times with the Former
Association’s counsel to no avail . . .
39. In the meantime, the Former Association, in coordination with its
Officers, made multiple . . . oral and written statements about the
University and its Administration to Alumni, donors and members of
the public having relationships with the University. For example, the
Former Association published a letter to its website, dated March 21,
2018, addressed to Dr. Daniel R. Jackson, Chair of the Oakwood
University Board of Trustees (the “Website Letter”). In the Website
Letter, the Former Association through its counsel accuses the
University of “unlawful intermeddling and interference with the
activities of [the Former Association]” . . .
40. On March 22, 2018, counsel for the University attempted again to
reach . . . [an] understanding regarding fund-raising during Alumni
Weekend. . . . Through counsel, the Board requested that the Former
Association not accept donations while its exempt status [was] revoked,
but offered to receive and hold any donations in a separate account and
to disburse such funds as requested by OUAA. The Board also offered
to issue a joint statement to Alumni and donors in advance of Alumni
Weekend. . . .
41. . . . On March 27, 2018 at 9:06 AM, counsel for the University
followed up to see if the Former Association intended to respond to the
University’s requests regarding Alumni Weekend . . . Later that day,
counsel for the University informed the Former Association’s counsel
that they needed to come to a written understanding by close of business
March 28, 2017. . . .
42. On March 28, 2018, after . . . having learned of the Former
Association’s plans to have an unidentified, third-party charity accept
donations during Alumni Weekend, the Board, through counsel, gave
the group straightforward directives . . .
21

43. In this message, the Board advised the Former Association not to
use the unknown third-party to accept donations raised through the use
of the University’s name . . . Rather, the Board asked that donations
collected be made payable to Oakwood University (whose tax exempt
[sic] status is not in question), which would be held for use on behalf
of the Alumni Association . . .
44. . . . the Former Association insisted on using the unaffiliated thirdparty organization to receive and hold the funds until its status could be
reinstated. The University could not agree to this arrangement in light
of its obligations under the SACS accreditation standards.
45. With thousands of Alumni scheduled to arrive for Alumni
Weekend the next day, the Board decided to wait until after the
weekend to determine what to do . . . 20
(Doc. 1, pp. 15-18; see also, Doc. 44-1, p. 2, ¶4).
On April 16, 2018, the University decided to break ties with the Alumni
Association. (Doc. 1, p. 20, ¶50). The University revoked the Alumni Association’s
permission to use the University’s name and trademarks and to raise funds on the
University’s behalf. (Doc. 1, p. 20, ¶51). The University, through counsel, sent the
Alumni Association a cease and desist letter that, in pertinent part, stated:
Effective immediately, the University disassociates itself from the
[Association] and all the [Association]’s fundraising efforts. The
[Association] no longer has permission to use the University’s name (or
Oakwood College's name) in any manner associated with the
[Association] or its fundraising efforts. The University hereby requests
that the [Association] immediately cease and desist from using the
University’s name or registered marks in any form or media
whatsoever, including its website or other communications. The
20

The University asserts that the Alumni Association made multiple false and defamatory written
and oral statements about the University during this time. (Doc. 1, pp. 18-19, ¶¶46–48).
22

University also requests that, effective immediately, the [Association]
stop representing to the public or the University’s alumni that the
[Association] raises funds for the University or that the purpose of the
[Association] is to raise such funds.
(Doc. 1-10, p. 2; Doc. 1, pp. 20–21, ¶52). The Association did not respond.
On May 14, 2018, the University sent a second letter that, in pertinent part,
stated:
1) The . . . Association and its representatives must accept the Board’s
decision that the group has been disassociated from the University and
all University fundraising efforts (i.e. the Former Association must
cease and desist from all fundraising and solicitation efforts on behalf
of the University and make that clear to the public).
2) The . . . Association and its representatives must cease and desist
from using the University’s name, Oakwood College’s name, and any
confusingly similar variants thereof (including the University’s initials)
for any reason or in any form or media, including in the group’s name
or on the group’s website and/or letterhead.
3) Similarly, the . . . Association and its representatives must
immediately cease and desist from using, in any form or media
whatsoever, including on its website or other communications any and
all trade or service marks of the University, whether registered or
unregistered, including the marks identified in U.S. Trademark
Registration Nos. 3,601,698, 3,591,212 and 4,352,439, and any
pending applications, among other trade and service marks.
4) The . . . Association and its representatives must immediately cease
all such use, and further must withdraw or cancel the name reservation
filed March 19, 2018 for “Oakwood University Alumni Association”
that is currently pending in the office of the Alabama Secretary of State.
5) The . . . Association and its representatives must immediately cease
and desist from attempts to plan or organize alumni fundraising events,
including Oakwood University’s Alumni Weekend and inserting
representatives into Aeolian activities, or other alumni fundraising
23

events. The University’s Office of Advancement and Development,
working in harmony with University alumni, is now charged with the
execution of those duties.
(Doc. 1-12, p. 3; Doc. 1, pp. 22–23, ¶56). In this letter, the University gave the
Alumni Association until May 17, 2018 to comply with these demands. (Doc. 1, pp.
22–23, ¶56; Doc. 1-12, p. 2). The Association refused to respond to, or comply with,
this second letter. (Doc. 1, p. 23, ¶57).
E. Post-Lawsuit Use of the University’s Marks
To compel the Association’s compliance with its instructions regarding
fundraising, on June 2, 2018, the University sued and asked the Court to enjoin the
Alumni Association from using the University’s marks. (Doc. 1). Since then, the
Alumni Association has continued to operate the website oakwoodalumni.org.
(Doc. 1, p. 26, ¶63). The following header appears on that site:

(See http://oakwoodalumni.org/). As the image indicates, the Alumni Association
continues to use the “Oakwood University” and “OU” marks, the University’s color
24

scheme, and the “flame of knowledge” that appears on the University seal Ancillary
Mark. (See Doc. 1-2, pp. 2-3; Doc. 1, p. 7, ¶15). The website also features displays
of the stylized Ancillary Mark “The Aeolians” as in the following image:

(http://oakwoodalumni.org/aeolians-in-orlando/; Doc. 1, p. 26, ¶63).

Other

University trademarks appear in photos and videos posted on the website. The
Alumni Association still uses the name “Oakwood University Alumni Association”
in correspondence and solicitations. (Doc. 1, p. 26, ¶63).
At the address http://oakwoodalumni.org/about-us, the following appears:
The Oakwood University Alumni Association is organized to connect
and engage Oakwood alumni, students and friends of the University
and promote the welfare of Oakwood University. We have a desire to
constantly improve the quality and scope of the work we do. We need
your help. Oakwood Alumni and friends are talented and proud of our
25

legacy, together we can build upon our past and create new
opportunities for the future.
Although there is no direct link to this page from the website’s home page, the page
is published and viewable if a person enters the above website address.
As shown in the following image, in November 2018, the Alumni Association
used Oakwood’s colors, the flame of knowledge, and the Oakwood University and
OU marks for its “Giving Tuesday” campaign:

26

(http://oakwoodalumni.org/giving-tuesday/). Again, although there is no direct link
to this page from the website’s home page, the page is published and viewable at the
above website address. As seen in the image, the Alumni Association notes it
contributes money to “University capital campaign projects.” As shown on the
27

following image, that campaign directly competed with the University’s annual
Giving Tuesday campaign:

(https://twitter.com/OakwoodU/status/1067433010159484930/photo/1).
II.

PROCEDURAL BACKGROUND
In an early effort to mend the parties’ relationship and find common ground,

the undersigned referred this action to a magistrate judge for mediation. (Doc. 28).
After more than four months in mediation with the magistrate judge (9-5-18 docket
28

entry through 1-22-19 docket entry), the parties reached an impasse. (Doc. 38).
After receiving briefing and evidence from the parties concerning the University’s
motion for preliminary injunction, the Court found that the record established the
University no longer would accept donations from Alumni Association. (Doc. 46,
p. 1) (citing Doc. 44, p. 3).

The Court noted it had reviewed the Alumni

Association’s website and other Association publications and found that “some of
the language on the website and in other publications may confuse potential donors”
because donors might infer that the Alumni Association would continue to donate
directly to the University. (Doc. 46, p. 1). 21 The Court instructed the parties to
develop an appropriate disclaimer for the Alumni Association to use in its
publications “to eliminate potential confusion regarding fundraising.” (Doc. 46, p.
2).
In anticipation of Alumni Weekend in the spring of 2019, on March 28, 2019,
the Court ordered as follows:
In light of the parties’ upcoming annual alumni events, to eliminate
potential confusion regarding fundraising, the Court orders the parties
to comply with the following instructions:
1.
All written communications published by or on behalf of
Oakwood University Alumni Association after the date of this Order

21

In that order, the Court cited the March 19, 2019 version of a page of the Alumni Association’s
website entitled “WHERE DOES THE MONEY GO?” and noted the Alumni Association stated
money the Association raised went to “OUR UNIVERSITY.” (Doc. 46, p. 2). Currently, that
page does not contain that language.
29

that relate to fundraising or other aspects of its operations will
prominently feature the following notice:
Notice: This Association is independent from and not
affiliated with Oakwood University. This Association
may not and does not raise funds for or on behalf of
Oakwood University. This Association raises funds for
alumni activities that the Association sponsors. The
Association also raises funds to donate directly to students
who now attend, will attend, or have attended Oakwood
University to provide assistance with educational
expenses.
2.
The Association will not in any communications state,
suggest, or imply that it provides funds to Oakwood University or that
the Association represents Oakwood University. The Association may
communicate that it donates funds directly to students who now attend,
will attend, or have attended Oakwood University to provide assistance
with educational expenses.
3.
As soon as possible but no later than seven days from the
date of this order, the Association will remove from its website and
social media accounts (including, but not limited to, Facebook, Twitter,
YouTube, and Instagram) statements that suggest or imply that it
provides funds to Oakwood University or that the Association
represents Oakwood University. This instruction does not affect
statements concerning donations of funds directly to students who now
attend, will attend, or have attended Oakwood University to provide
assistance with educational expenses.
4.
Until this litigation is resolved, neither party may issue
public statements (e.g., press releases) regarding this litigation.
(Doc. 47, pp. 1-2, ¶¶1-4).
During the 2019 Alumni Weekend, Dr. Powell-Hicks and other
representatives of the Alumni Association distributed copies of the following printed
communication:
30

(Doc. 48, pp. 2-3). The University brought the publication to the Court’s attention
and argued the flyer violated the Court’s March 28, 2019 Order. The Court agreed.
(Doc. 51). The Court wrote:
31

A written communication concerning fundraising that merely refers
readers to the Alumni Association’s website does not satisfy the notice
requirement. If the Alumni Association is not sure whether a written
communication should contain the notice language, then the
Association should request guidance before it publishes the written
communication. Future violations of the Court’s instructions shall be
grounds for sanctions.
(Doc. 51).
At some point, the Alumni Association published and circulated the following
written communication:

(Doc. 55, p. 5). The communication does not contain the notice required by the
March 28, 2019 Order. Then, the Alumni Association revised this communication
as follows:

32

(Doc. 61-2, p. 8). The tiny language at the bottom of the card is the court-ordered
disclosure.
The Court found that neither communication complied with the March 28,
2019 order which requires the notice language to appear prominently on Alumni
Association communications concerning fundraising. (Doc. 60, p. 1). The Court
found the notice language in the revised communication was “barely visible and
illegible because of the tiny font style.” (Doc. 60, p. 4, ¶7). The Court ordered:
a. Future written communications from the Association that relate to
fundraising or other aspects of its operations shall include the Notice
Language in a font size, boldness, and color consistent with the font
used in the primary portion of the written communication. The
Notice Language must be easily legible.
b. To meet the requirements of the Court’s March 28, 2019 Order, the
notice language must be prominently featured, which means, among
33

other things, that it must be placed in a written communication
(including video) where it will be seen by everyone reading or
viewing the communication.
c. Future violations of the Court’s Order shall result in sanctions
against the Association, the Association’s officers, or both. The
Court reiterates: “If the Alumni Association is not sure whether a
written communication should contain the notice language, then the
Association should request guidance before it publishes the written
communication.” (Doc. 51). Similarly, if the Association is not sure
whether a written notice meets the requirements set forth above such
that the notice is “prominently feauture[d],” then the Association
should request guidance before it publishes the written
communication.
(Doc. 60, pp. 4-5, ¶¶a-c).
In April 2020, the Alumni Association published on its Facebook page a series
of videos entitled “7 Days of Praise.” One of the videos begins with a narrator
saying:
For more than 9 decades, the Oakwood University and Oakwood
University Alumni Association (OUAA) has [sic] worked together
soliciting funds for students’ education and goodwill towards Oakwood
and its experience. OUAA has remained steadfast to this decades old
mission.
(See https://www.facebook.com/375235169965/videos/655544405289942/).
following still frame is from a portion of the video during the narration:

34

The

(See https://www.facebook.com/375235169965/videos/655544405289942/).

The

video is approximately 44 minutes long. The notice in the above still frame appears
12 seconds into the video and disappears after five seconds. The notice reappears
with approximately two minutes left in the video during a fundraising pitch
involving the following still frame:

35

(https://www.facebook.com/375235169965/videos/655544405289942/). The video
for another day omits the notice until the fundraising pitch from the previous video
appears.
(https://www.facebook.com/375235169965/videos/1152552171746654/?v=115255
2171746654).
III.

CONCLUSIONS OF LAW
To be entitled to an order preliminarily preventing the Alumni Association

from using the trademarked name “Oakwood University,” the University must
establish a substantial likelihood of success on the merits of its trademark
infringement claim and a substantial threat of irreparable injury in the absence of an
injunction that outweighs the potential harm to the Alumni Association. The
36

University also must demonstrate that an injunction “will not disserve the public
interest.” Friedenberg v. Sch. Bd. of Palm Beach Cty., 911 F.3d 1084, 1090 (11th
Cir. 2018). “[A] preliminary injunction is an extraordinary and drastic remedy not
to be granted unless the movant clearly establishe[s] the burden of persuasion for
each prong of the analysis.” Am.’s Health Ins. Plans v. Hudgens, 742 F.3d 1319,
1329 (11th Cir. 2014) (internal quotations and citations omitted).
Before delving into the details of the University’s infringement claim to
decide whether the University has demonstrated a likelihood of success on the merits
of that claim, we should review a few basics of trademark law. A trademark is “any
word, name, symbol, or device, or any combination thereof” used by a person “to
identify and distinguish his or her goods ... from those manufactured or sold by
others and to indicate the source of the goods.” 15 U.S.C. § 1127. Under the
Lanham Act, “marks that are capable of distinguishing the owner’s goods from those
of others, i.e., that are sufficiently ‘distinctive,’ are eligible for federal registration .
. .” with the United States Patent & Trademark Office. Tana v. Dantanna’s, 611
F.3d 767, 773 (11th Cir. 2010). As the Court has found, the University successfully
registered the mark “Oakwood University” in 2009.
The owner of a federally registered trademark may protect its mark under
Section 32(a) of the Lanham Act. The Act provides:
(1) Any person who shall, without the consent of the registrant-37

(a) use in commerce any reproduction, counterfeit, copy, or colorable
imitation of a registered mark in connection with the sale, offering for
sale, distribution, or advertising of any goods or services on or in
connection with which such use is likely to cause confusion, or to cause
mistake, or to deceive; or
(b) reproduce, counterfeit, copy, or colorably imitate a registered mark
and apply such reproduction, counterfeit, copy, or colorable imitation
to labels, signs, prints, packages, wrappers, receptacles or
advertisements intended to be used in commerce upon or in connection
with the sale, offering for sale, distribution, or advertising of goods or
services on or in connection with which such use is likely to cause
confusion, or to cause mistake, or to deceive, shall be liable in a civil
action by the registrant for the remedies hereinafter provided. Under
subsection (b) hereof, the registrant shall not be entitled to recover
profits or damages unless the acts have been committed with
knowledge that such imitation is intended to be used to cause confusion,
or to cause mistake, or to deceive.
15 U.S.C.A. § 1114(1)(a); see also, Sovereign Military Hospitaller Order of Saint
John of Jerusalem of Rhodes & of Malta v. Fla. Priory of the Knights Hospitallers
of the Sovereign Order of Saint John of Jerusalem, Knights of Malta, The
Ecumenical Order, 809 F.3d 1171, 1181 (11th Cir. 2015) (“A person is liable for
infringement if he uses a mark in commerce that is confusingly similar to a registered
mark.”) (citing 15 U.S.C. § 1114(1)(a)).
“Under the Lanham Act, 15 U.S.C. § 1114(1), a defendant is liable for
trademark infringement if the plaintiff shows (1) that its mark has priority and (2)
that the defendant’s mark is likely to cause consumer confusion.” PlayNation Play
Systems, Inc. v. Velex Corporation, 924 F.3d 1159, 1165 (11th Cir. 2019) (citing
Frehling Enter., Inc. v. Int’l Select Grp., Inc., 192 F.3d 1330, 1335 (11th Cir. 1999)).
38

The parties agree the University has priority in the mark “Oakwood University.” 22
Therefore, the University is likely to prevail on its infringement claim if the
University can demonstrate that the Alumni Association adopted a name “that was
the same, or confusingly similar to” the University’s mark, “such that consumers
were likely to confuse the two.” Tana v. Dantanna’s, 611 F.3d 767, 773 (11th Cir.
2010). 23
A. Substantially Likelihood of Success on the Merits of a Trademark
Infringement Claim
The University contends that the Association’s use of the trademarked name
“Oakwood University” for developing relationships with Oakwood University
alumni is confusing because alumni who join the “Oakwood University Alumni
Association” and/or donate to the Association may believe the University and the
Alumni Association are affiliated and the Alumni Association is a conduit for
donations to the University, but the two entities no longer are associated, and the
University may not accept donations from the Association.

22

During the July 17, 2020 video conference in this matter (see July 17, 2020 minute entry), the
parties acknowledged that the University has priority in the Oakwood University mark. A
transcript of the hearing is available upon request.
23

Tana concerns a trademark infringement claim under § 43(a) of the Lanham Act. Because the
confusion prongs of the infringement tests under § 32(a) and § 43(a) of the Lanham Act are
substantially similar, a district court may rely on cases decided under § 43(a) when evaluating
consumer confusion. 611 F. 3d at 773 n.5.
39

When evaluating a mark’s propensity to confuse consumers, a district court
considers seven factors:
(1) strength of the mark alleged to have been infringed; (2) similarity
of the infringed and infringing marks; (3) similarity between the goods
and services offered under the two marks; (4) similarity of the actual
sales methods used by the holders of the marks, such as their sales
outlets and customer base; (5) similarity of advertising methods; (6)
intent of the alleged infringer to misappropriate the proprietor’s good
will; and (7) the existence and extent of actual confusion in the
consuming public.
Webster v. Dean Guitars, 955 F.3d 1270, 1278 (11th Cir. 2020) (quoting Tana, 611
F.3d at 774-75); see also, Sovereign Military Hospitaller Order of Saint John of
Jerusalem of Rhodes & of Malta v. Fla. Priory of the Knights Hospitallers of the
Sovereign Order of Saint John of Jerusalem, Knights of Malta, The Ecumenical
Order, 809 F.3d 1171, 1181 (11th Cir. 2015). “‘The appropriate weight to be given
to each of these factors varies with the circumstances of the case.’” Webster v. Dean
Guitars, 955 F.3d 1270, 1278 (11th Cir. 2020) (quoting AmBrit, Inc. v. Kraft, Inc.,
812 F.2d 1531, 1538 (11th Cir. 1986)). “The district court ‘does not have to consider
all of these factors in every case and in some cases, “new” factors may merit
consideration.’” Sovereign Military Hospitaller, 809 F.3d at 1181 (quoting Swatch
Watch, S.A. v. Taxor, Inc., 785 F.2d 956, 958 (11th Cir.1986)). “‘The real question
is whether the court’s ultimate determination about the ‘likelihood of confusion’ was
correct.’” Sovereign Military Hospitaller, 809 F.3d at 1181 (quoting Univ. of Ga.
Athletic Ass'n v. Laite, 756 F.2d 1535, 1543 (11th Cir.1985)).
40

“The unauthorized use of a mark by a former licensee presents a particular

danger of confusion to the public. It has been described as ‘a fraud on the public,
since they are led to think that the ex-licensee is still connected with the licensor.’”
Villanova Univ. v. Villanova Alumni Educ. Found., Inc., 123 F. Supp. 2d 293, 309
(E.D. Pa. 2000) (quoting 4 MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION
§ 25:31 (5th ed.)); see also, Burger King Corp. v. Mason, 710 F.2d 1480, 1492 (11th
Cir. 1983) (“Common sense compels the conclusion that a strong risk of consumer
confusion arises when a terminated franchisee continues to use the former
franchisor’s trademarks.”).
1. The Strength of the Mark Alleged to Have Been Infringed
Oakwood University is the primary mark belonging to the University that the
Association allegedly has infringed. The strength of a mark is measured by its
distinctiveness and by “the extent of third-party use of the mark.” John H. Harland
Co. v. Clarke Checks, Inc., 711 F.2d 966, 975 (11th Cir. 1983) (internal marks and
citations omitted); see also Frehling Enterprises, 192 F.3d at 1335-36. 24
“Distinctive marks are marks that ‘serve the purpose of identifying the source
of the goods or services.’” Tropic Ocean Airways, Inc. v. Floyd, 598 Fed. Appx.

In evaluating the strength of a mark, a court also may consider whether the mark has become
incontestable pursuant to 15 U.S.C. § 1065(3). Frehling Enterprises, 192 F.3d at 1336. There is
no evidence in this case that the University has taken the steps necessary to make the mark
“Oakwood University” incontestable.
24

41

608, 610 (11th Cir. 2014) (quoting Welding Servs., Inc. v. Forman, 509 F.3d 1351,
1357 (11th Cir. 2007)). There are four levels of distinctiveness, ranging from
generic marks, which are the least distinctive, to fanciful and arbitrary marks, the
most distinctive marks. As the Eleventh Circuit has explained:
a mark can be “distinctive” in one of two ways: It can be “inherently”
distinctive, or it can “acquire” distinctiveness over time. Inherently
distinctive marks themselves identify the source of a particular product
or service: “Coca-Cola,” for example, describes only one brand of soft
drink—one producer. A mark that has acquired distinctiveness, by
contrast, might initially have been understood to describe a broad class
of potential products or services, but over time it has taken on a
“secondary meaning” that links it to a particular source: “California
Pizza Kitchen,” for example, may facially describe any random pizza
eatery in the Golden State, but the public has come to associate it with
one brand in particular.
To separate the “distinct” from the non-“distinct”—and to differentiate
among the distinct, for that matter—we have classified marks into four
categories, in descending order of strength: (1) “fanciful” or “arbitrary,”
(2) “suggestive,” (3) “descriptive,” and (4) “generic.” We consider
fanciful marks (think “Verizon” telecommunications—the name is a
made-up word), arbitrary marks (think “Apple” computers—the name
is a real word that has nothing to do with the product) and suggestive
marks (think “Igloo” coolers—the name is a real word that bears only
an oblique relationship to the product) to be “inherently” distinctive.
For marks in these categories, no proof of secondary meaning is
necessary. By contrast, we consider descriptive marks (for example, an
eyeglasses store called “Vision Center”) and generic marks (a bookselling company called “Books”) not to be inherently distinctive.
Descriptive marks can become protectible only if they “acquire”
distinctiveness by obtaining a “secondary meaning,” and generic marks
can never become protectible.
Royal Palm Properties, LLC v. Pink Palm Properties, LLC, 950 F.3d 776, 782–83
(11th Cir. 2020) (footnote and citations omitted).
42

When a mark is registered with the USPTO, there is a “rebuttable presumption
that the mark[ ] [is] protectable or ‘distinctive.’” Royal Palm Properties, 950 F.3d
at 783 (internal quotations and citations omitted); see also, Welding Servs., 509 F.3d
at 1357 n.3 (“Registration establishes a rebuttable presumption that the marks are
protectable or ‘distinctive.’”).

Because the University registered the mark

“Oakwood University” with the USPTO, the Court presumes the mark is distinctive.
Royal Palm Properties, 950 F.3d at 784.
To “successfully challenge a registered mark on distinctiveness grounds, the
challenger must overcome the presumption of validity by showing—by a
preponderance of the evidence—that the mark is not distinctive.” Royal Palm
Properties, 950 F.3d at 783 (citations omitted). The Alumni Association has not
tried to prove that the mark “Oakwood University” is not distinctive. Had the
Alumni Association tried, the challenge would fail because “Oakwood University”
is inherently distinctive. Like “Apple” computers, “Oakwood” is an arbitrary mark
because “Oakwood” is a word that has nothing to do with the University’s product
but instead is a word selected to describe the property on which the school was
founded. See page 1. “Arbitrary marks are the strongest of the four categories” of
marks. Frehling Enterprises, 192 F.3d at 1336.
As for third-party use of the mark, “[t]he less that third parties use the mark,
the stronger it is, and the more protection it deserves.” Frehling Enterprises, 192
43

F.3d at 1336.

The only evidence of third-party use of the mark “Oakwood

University” is the Association’s name, Oakwood University Alumni Association.
While that use dilutes the strength of the University’s mark somewhat, the mark,
overall, is very strong, especially given the Court’s finding that the University
allowed the Alumni Association to use the Oakwood University mark.
2. The Similarity of the Infringed and Infringing Marks
Assuming for purposes of this opinion that the Alumni Association has its
own legitimate mark, its mark, “Oakwood University Alumni Association,” is very
similar to the University’s registered mark, Oakwood University. 25 As noted in the
factual findings, the Alumni Association uses the University’s ancillary mark, a
flame (see pages 27, 31, 32, 33, 35, above), in conjunction with its mark, “OUAA
Oakwood University Alumni Association (see pages 27, 31, 32, 33, 35, above).

The Alumni Association contends that it owns a mark that is independent of the
University’s registered mark. The Association posits:

25

OUAA owns the trademark “OAKWOOD UNIVERSITY ALUMNI
ASSOCIATION.” Plaintiff owns a different composite mark, “OAKWOOD
UNIVERSITY.” They have co-existed in their current forms since 2010 and in their
earlier forms since 1926, and each is an established independent mark with a
separate owner.
(Doc. 18, p. 10). The University contends that it licensed the Association’s use of “Oakwood
University,” and it revoked that license in April 2018. The Court assumes for purposes of this
discussion that the Association has rights in an independent, common law mark “Oakwood
University Alumni Association.”
44

3. The Similarity Between the Goods and Services Offered Under the
Two Marks
Practically, there are few differences between the alumni activities of the
University and the Alumni Association.

The University and the Association

organize alumni events. Both raise funds for student scholarships and other forms
of student assistance. For years, and even after the University severed its ties with
the Alumni Association, the Association represented publicly that it raised funds
which it donated to the University. (pages 27, 29, 31). The goods and services the
University offers are significantly broader than the goods and services the
Association provides, but where there is overlap, it is considerable.
The Association argues the goods and services it offers under its alleged
common law mark are different from the goods and services the University offers
under its registered mark. The Association points to the fact that the University
registered its mark in connection with, among other things, “educational” and
“entertainment services.” (Doc. 1, pp. 6-7, ¶10; Doc. 1-1, pp. 2-3; Doc. 15, pp. 2-3,
21-22, ¶¶10, 16; Doc. 20, p. 4, ¶16). The Association argues that because the
registration did not specifically include “charitable services” or “fundraising
activities,” the University did not protect its mark for those purposes. (Doc. 18, pp.
2-3, 7-8).

45

The Alumni Association’s argument is not persuasive for at least two reasons.
First, the similarity of goods and services factor is a measure of consumer confusion.
Consumers are not concerned with technicalities like the scope of a registered mark.
Consumers evaluate available goods and services, and the goods and services that
the University and the Association offer to Oakwood alumni are very similar.
Second, “the educational activities of a non-profit educational institution inherently
encompass charitable services. Thus, [a] registration certificate logically extends to
the University’s use of [its] marks in fundraising activities that are necessary to
support its education and entertainment activities.” Villanova Univ. v. Villanova
Alumni Educ. Found., Inc., 123 F. Supp. 2d 293, 302 (E.D. Pa. 2000); see also,
Potomac Conference Corp. of Seventh-Day Adventists v. Takoma Acad. Alumni
Ass’n, Inc., No. CIV.A. DKC 13-1128, 2014 WL 857947, at *8 (D. Md. Mar. 4,
2014) (alumni activities are a necessary activity undertaken by a school in support
of its educational services and mission). As the Eleventh Circuit has explained:
We recognize that, as to federally-registered trademarks, we have not
limited protection to the actual product or products listed in the
certificate of registration. “The remedies of the owner of a registered
trademark,” we have held, “are not limited to the goods specified in the
certificate, but extend to any goods on which the use of an infringing
mark is ‘likely to cause confusion.’”
Savannah Coll. of Art & Design, Inc. v. Sportswear, Inc., 872 F.3d 1256, 1266–67
(11th Cir. 2017) (quoting Continental Motors Corp. v. Continental Aviation Corp.,
375 F.2d 857, 861 (5th Cir. 1967) (citation omitted)).
46

4. The Similarity of Advertising Methods and Actual Sales Methods
Used by the Holders of the Marks, Such as Their Sales Outlets and
Customer Base
The record does not contain details about the methods the University and the
Association use to contact, support, and organize alumni and to raise funds from
alumni, but the record discloses generally that both the University and the Alumni
Association use social media and other forms of communication to maintain contact
with Oakwood alumni.

As noted, both sponsor alumni events.

Until their

relationship soured, the University and the Alumni Association coordinated events
for Alumni Weekend each spring. Most importantly, the customer base of the
Association and the University with respect to alumni relations is identical.26
5. The Intent of the Alleged Infringer to Misappropriate the
Proprietor’s Good Will
Where the evidence demonstrates the alleged infringer intended to “capitalize
on the popularity of” the plaintiff’s product and hoped to “catch the attention” of the
plaintiff’s consumers with the infringing mark, the intent factor weighs in favor of a
finding of consumer confusion. Univ. of Ga. Athletic Ass’n v. Laite, 756 F.2d 1535,
1545 (11th Cir. 1985); see also Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252,
263 (11th Cir. 1980) (“if the mark was adopted with the intent of deriving benefit

26

On the record in this case, it is logical to blend the discussion of the fourth of fifth factors in the
customer confusion analysis.
47

from the reputation of “Domino” that fact alone ‘may be sufficient to justify the
inference that there is confusing similarity.’”) (quoting RESTATEMENT

OF

TORTS,

§729, comment f (1938)). “Bad faith in the adoption and use of a trademark
normally involves the imitation of packaging material, use of identical code
numbers, adopting of similar distribution methods or other efforts by a party to “pass
off” its product as that of another.” Amstar Corp., 615 F.2d at 263 (citing Kentucky
Fried Chicken Corp. v. Diversified Packaging Corp., 549 F.2d 368, 382-83 (5th Cir.
1977)).
Here, bad faith consists not only of the Alumni Association’s use of the
University’s registered mark, its ancillary marks, and it colors but also the Alumni
Association’s repeated violation of court orders designed to distance the
Association’s product from the University’s product while the Court attempted to
help the parties resolve their dispute. As the Court has found, after the University
severed its ties with the Association, the Association continued to use the “Oakwood
University” and “OU” marks, the University’s blue and gold color scheme, and the
“flame of knowledge” that appears on the University seal ancillary mark. (See Doc.
1-2, pp. 2-3; Doc. 1, p. 7, ¶15). “[T]o eliminate potential confusion regarding
fundraising” and enable the Alumni Association to continue its operations with
minimal disruption while the Court addressed the parties’ disagreement, the Court

48

ordered the Alumni Association to include “prominently” in its communications to
alumni the following clarifying language:
Notice: This Association is independent from and not
affiliated with Oakwood University. This Association
may not and does not raise funds for or on behalf of
Oakwood University. This Association raises funds for
alumni activities that the Association sponsors. The
Association also raises funds to donate directly to students
who now attend, will attend, or have attended Oakwood
University to provide assistance with educational
expenses.

(Doc. 47).

The Alumni Association repeatedly violated the Court’s order by

ignoring the notice requirement or providing the notice in a format virtually
undetectable and certain to go unseen by alumni. The Alumni Association’s conduct
leaves no room for doubt about its intent; the Association wants Oakwood alumni to
direct their giving to the Alumni Association instead of the University.
6. The Existence and Extent of Actual Confusion in the Consuming
Public
“The most persuasive evidence in assessing the likelihood of confusion is
proof of actual confusion. All. Metals, Inc., of Atlanta v. Hinely Indus., Inc., 222
F.3d 895, 907 (11th Cir. 2000) (citing Conagra, Inc. v. Singleton, 743 F.2d 1508,
1514 (11th Cir. 1984)); see also, World Carpets, Inc. v. Dick Littrell's New World
Carpets, 438 F.2d 482, 489 (5th Cir. 1971) (“[I]t is not necessary to show actual
confusion. One merely has to show that the likelihood of confusion exists. There can
49

be no more positive or substantial proof of the likelihood of confusion than proof of
actual confusion.”).27 “Moreover, reason tells us that while very little proof of actual
confusion would be necessary to prove the likelihood of confusion, an almost
overwhelming amount of proof would be necessary to refute such proof.” World
Carpets, 438 F.2d at 489. The record before the Court indicates that, since the split,
there has been actual confusion regarding the relationship between the University
and the Alumni Association. In October 2018, a University alumna contacted the
University’s Office of Advancement and Development seeking a receipt for a
donation she made to the Alumni Association. (Doc. 40-5, pp. 1-2, ¶8).28
Emile Parker, the University’s Director for Alumni Relations in the Office of
Advancement and Development since August 2018, states he has witnessed
confusion caused by the Alumni Association’s use of the Oakwood University name
since he began his position. (Doc. 40-5, p. 1, ¶5). He explains:
Over the past several months, I spoke with numerous people who were
confused about how to make donations to the University. These people
wanted to give money to the University, but were not sure if they should
donate directly to the University or if a donation to the Association was
27

This Court is bound by decisions the former Fifth Circuit rendered before October 1, 1981,
Bonner v. City of Prichard, 661 F.2d 1206, 1209 (11th Cir. 1981) (en banc).
28

The Association objects to this and other evidence of actual confusion as hearsay. (Doc. 41, p.
12). The objection is without merit as the Court may consider hearsay at this stage of the
proceedings. Levi Strauss & Co. v. Sunrise Int'l Trading Inc., 51 F.3d 982, 985 (11th Cir. 1995)
(“At the preliminary injunction stage, a district court may rely on affidavits and hearsay materials
which would not be admissible evidence for a permanent injunction, if the evidence is ‘appropriate
given the character and objectives of the injunctive proceeding.’”) (quoting Asseo v. Pan American
Grain Company, 805 F.2d 23, 26 (1st Cir. 1986)).
50

a donation to the University. I heard these questions from alumni and
University supporters located throughout the United States. I tried to
give clarity to these individuals that donations to the Association are
not donations to the University as it is no longer associated with the
school.
(Doc. 40-5, p. 1, ¶6). Mr. Parker also notes:
In planning for the University’s 2019 Alumni Weekend, I observed
significant confusion regarding the relationship between the University
and the Association. When my office first published the flier for the
Alumni Weekend, I saw significant questions and concerns about the
event, both in private conversations and on social media. Specifically,
people were confused whether the University or the Association was
sponsoring Alumni Weekend events.
[] Additionally, local businesses expressed confusion over the
relationship between the University and the Association. In my office’s
effort to secure hotel rates for Alumni Weekend, at least one hotel was
confused about my inquiry as they thought they already set rates for the
Alumni Weekend. In a January 22, 2019 conversation with the hotel, I
explained that they established rates with the Association which is
separate from the University. The hotel spoke with me about setting a
University rate, but had concerns that having two rates for similar
University and Association names would confuse their staff handling
reservations. For a November 2018 event, I needed to reserve items
from a local rental company. When I called and dropped by the vendor,
they were unsure whether they should list my bill under the University’s
account or the Association’s account. I had to explain the difference
between the two entities since the names were similar.
(Doc. 40-5, p. 2, ¶¶9-10). Oakwood alumni have called Mr. Parker’s office by
mistake when trying to reach the Alumni Association. (Doc. 61-1, p. 3, ¶10).
Twitter exchanges illustrate the confusion over which entity, the University
or the Association, was holding an alumna gathering at the Von Braun Civic Center
in Huntsville. (Doc. 40-4, pp. 20-21 (alum describing herself as “mad confused”
51

about 2019 Alumni Weekend events); see also, Doc. 40-4, p. 36 (“So who will have
their service at the Von Braun/ The new Alumni Relations team or OUAA? This is
so confusing!”); Doc. 40-4, p. 33 (noting confusion between whether the group
known as “Dynamic Praise” was part of the University and commenting “[p]erhaps
an attorney can better clarify”); Doc. 40-4, p. 10 (“Which one are we . . . ou [sic] or
OUAA?”)).
On January 24, 2019, comedian Anthony Hackett posted to YouTube and
Facebook a video parodying the confusion. The following still is from that video as
it appears on YouTube:

52

(https://www.youtube.com/watch?v=Dt4IszXjjGY). In the Facebook comments,
Mr. Hackett noted he “just put to video what Oakwood alumni have been saying all
over facebook [sic] already.” (Doc. 40-4, p. 25). Other comments in response to the
video generally agreed with the video’s characterization of the confusion. (Doc. 404, p. 1, ¶8; see Doc. 40-4, pp. 25-30).
As the 2019 Alumni Weekend approached, the University’s Office of
Integrated Marketing and Public Relations fielded questions from several people
confused about the relationship between the University and the Alumni Association
and alumni giving. (Doc. 40-4, pp. 1-3, ¶¶9-10). Kenn Dixon, Director of the
University’s Office of Integrated Marketing and Public Relations, states he fielded
some of those questions and heard from people who did not know whether money
sent to the Association would make it to the University. (Doc. 40-4, p. 2, ¶9). See
Villanova Univ., 123 F. Supp. 2d at 300 (evidence of confusion over what entity was
sponsoring an event); Takoma Acad., 2014 WL 857947, at *13 (evidence of inquiries
as to which organization was associated with the school and requests for tax receipts
from the school for donations paid to the alumni association).
Thus, the record contains overwhelming evidence of consumer confusion.
Because the parties agree the University’s “Oakwood University” mark has priority
over the Association’s claimed mark, the University has established a substantial
likelihood of success as to its trademark infringement claim.
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7. OU vs. OUAA
The Alumni Association contends that even if the University can establish a
likelihood of success on its infringement claim as it pertains to the “Oakwood
University” mark, the Association has a separate mark, OUAA, that does not
infringe on the University’s unregistered mark, OU. The Association argues it
should be allowed to continue to use OUAA.
If OU and OUAA are marks distinct from Oakwood University and Oakwood
University Alumni Association, respectively, then -- with one exception -- the
analysis concerning the Oakwood University and Oakwood University Alumni
Association marks applies equally to the OU and OUAA marks. If it is a separate
mark, the OU mark is not as strong as the Oakwood University mark because the
University did not register OU, and OU is not as distinctive as Oakwood University.
Otherwise, it is undisputed that OU has priority over OUAA, and the analysis of the
other factors regarding confusion is identical to the discussion of the factors as they
pertain to the marks Oakwood University and Oakwood University Alumni
Association.
Some would say that OU and OUAA are not separate marks that require
separate analysis. Some would say these are merely abbreviations for Oakwood
University and Oakwood University Alumni Association, respectively, that travel in
tandem with their related marks. Some courts have held that “[i]nitials for a
54

descriptive phrase merely represent short forms of the words for which they stand
and should receive the same degree of protection as those words.” Superior
Performers, Inc. v. Family First Life, LLC, No. 1:14CV283, 2015 WL 4158757, at
*4 (M.D.N.C. July 9, 2015) (internal quotations and citations omitted); see also G.
Heileman Brewing Co., Inc. v. Anheuser-Busch, Inc., 873 F.2d 985, 994 (7th Cir.
1989) (“[T]here is a heavy burden on a trademark claimant seeking to show an
independent meaning of initials apart from the descriptive words which are their
source.”); U.S. Conference of Catholic Bishops v. Media Research Ctr., 432 F. Supp.
2d 616, 623 (E.D. Va. 2006). We do not decide today whether to adopt this
reasoning because on the record here, the result is the same either way; the
University has established a substantial likelihood of success on its trademark
infringement claim both with respect to “Oakwood University” and “OU.”
B. Substantial Threat of Irreparable Injury in the Absence of an Injunction
1. The University Has Established It Will Suffer Irreparable Injury Unless
the Injunction Issues
In the Eleventh Circuit, there is “a presumption of irreparable harm once a
plaintiff establishes a likelihood of success on the merits of a trademark infringement
claim.” N. Am. Med. Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1227 (11th
Cir. 2008); see also, Tally-Ho, Inc. v. Coast Cmty. Coll. Dist., 889 F.2d 1018, 1029
(11th Cir. 1989). But in its latest pronouncement on the issue, the Eleventh Circuit
noted the Supreme Court’s decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S.
55

388 (2006), casts doubt on the validity of the presumption. N. Am. Med. Corp., 522
F.3d at 1228.
With or without the presumption, because there is substantial evidence of
actual confusion, there is harm, and that harm is irreparable. The Court tried to help
the Alumni Association mitigate the harm by requiring a disclaimer designed to
curtail confusion, but the Association repeatedly refused to use the disclaimer
properly. The record demonstrates the University’s inability to control its mark
could impact its accreditation. (See Doc. 44-1, p. 3, ¶7) (“By continuing to hold
itself out as raising funds for the University, even though the requirements of
SACSCOC 5.3 are not being satisfied, OUAA endangers the University’s
accreditation.”). It has been said that a company’s mark “is [its] authentic seal; by
it [the company] vouches for the goods which bear it; it carries [the company’s]
name for good or ill. If another uses it, he borrows the owner's reputation, whose
quality no longer lies within his own control. This is an injury, even though the
borrower does not tarnish it, or divert any sales by its use.” Ambassador E., Inc. v.
Orsatti, Inc., 257 F.2d 79, 82 (3d Cir. 1958) (internal quotations and citations
omitted). How much more the injury when the borrower does tarnish the name by,
for example, failing to file forms required by the IRS for three years. (Doc. 1, p. 14,
¶32). Money damages cannot repair the potential damage to University’s reputation.

56

Therefore, the University has established it will suffer irreparable injury if the
Court withholds an injunction.
2. The Balance of the Equities Favors an Injunction.
As noted above, the Alumni Association’s continued use of the University’s
marks adversely effects the University’s goodwill and reputation. On the other hand,
the Association may organize activities for Oakwood alumni and raise funds for
Oakwood students without using the Oakwood marks. Potomac Conference Corp.
of Seventh-Day Adventists v. Takoma Acad. Alumni Ass’n, Inc., No. CIV.A. DKC
13-1128, 2014 WL 857947, at *21 (D. Md. Mar. 4, 2014) (“[A] preliminary
injunction barring use of the marks at issue still allows Defendant to fundraise and
host events for students and alumni.”); .” Villanova Univ., 123 F. Supp. 2d at 311
(“‘One who uses another’s marks without permission ‘can hardly claim to be
harmed, since it brought any and all difficulties occasioned by the issuance of an
injunction upon itself.’”) (quoting Opticians Association of America v. Independent
Opticians of America, 920 F.2d 187,197 (3d Cir. 1990) (citations omitted)). True,
the Association will have to adopt a new name and introduce that name to Oakwood
alumni, but the evidence shows Oakwood alumni are very familiar with – and
concerned about – the rift between the University and the Alumni Association, so
alumni will not be surprised by a new name. And, again, the Alumni Association

57

brought the inconvenience on itself; the whole matter could have been resolved with
a bit of cooperation from the Association.
The Alumni Association relies on Computer Currents Publishing Corp. v.
Jaye Communications, Inc. 968 F. Supp. 684 (N.D. Ga. 1997), to support its
argument that an injunction should not issue because the harm to the Association
outweighs the harm to the University. (Doc. 41 p. 20). But the facts of Creative
Currents are distinguishable. In Creative Currents, the defendant agreed to stop
using the protected mark once it transitioned its business. In our case, the Alumni
Association expressly states that “it is not prepared to concede infringement or to
give up use of the mark.” (Doc. 41, p. 20). The Association argues that, like the
defendant in Creative Currents, it should be given additional time to “address the
merits of the dispute, and possibly reach a solution.” (Doc. 41, p. 21). The
Association’s conduct belies the argument.

The Alumni Association has

demonstrated repeatedly that it is unwilling to compromise. Nothing short of a
preliminary injunction will suffice.
C. The Injunction Will Not Disserve the Public Interest
The Eleventh Circuit has stated that “in ‘ordinary trademark infringement
actions ... complete injunctions against the infringing party are the order of the day.’”
Angel Flight of Georgia, Inc. v. Angel Flight Am., Inc., 522 F.3d 1200, 1209 (11th
Cir. 2008) (quoting SunAmerica Corp. v. Sun Life Assur. Co. of Canada, 77 F.3d
58

1325, 1336 (11th Cir. 1996)). “The reason is simple: the public deserves not to be
led astray by the use of inevitably confusing marks—even in cases in which more
than one entity has a legal right to use the mark.” Angel Flight, 522 F.3d at 1209
(citing SunAmerica Corp., 77 F.3d at 1336-37). The issuance of the injunction under
the circumstances of this case does not disserve the public interest.
IV.

CONCLUSION
For the reasons stated above, by separate order, the Court will issue a

preliminary injunction that prevents the Alumni Association from using the
Oakwood University mark.

DONE and ORDERED this August 14, 2020.

_________________________________
MADELINE HUGHES HAIKALA
UNITED STATES DISTRICT JUDGE

59