A settlement may be in the works for a trademark infringement lawsuit involving the Southern University System Foundation and two men who snatched up several Bayou Classic trademark and service mark registrations years after they expired in 2004.
U.S. District Court Judge Richard Bourgeois Jr. has ordered the foundation and defendants André Henderson and Gary Shelton to appear for a settlement conference scheduled to take place at 9 a.m. on Aug. 3 in his chambers at the Baton Rouge federal courthouse.
The foundation sued Henderson and Shelton in 2014, but the legal dispute dates back to 2004. As Business Report has previously reported, several registrations related to the annual Bayou Classic football game—on file with the Louisiana Secretary of State—were allowed to expire that year.
Years later, in an attempt to correct the “oversight,” the foundation filed new trademark applications with the Secretary of State to renew the Bayou Classic word mark and logo. Its request was denied.
The reason: Henderson had registered three separate Bayou Classic trademark and service mark registrations in 2012 and 2013. He also became a licensee with the Collegiate Licensing Co., Southern’s licensing agent.
The Bayou Classic is a 43-year-old annual tradition that pits historically black college rivals Southern University and Grambling State University against one another in a gridiron game and the Battle of the Bands & Greek Show. The event typically attracts more than 200,000 visitors to New Orleans for a weekend of activities. This year’s game is scheduled for Nov. 26 in the Mercedes-Benz Superdome.
According to the original complaint, Southern officials say they are the rightful owners of the Bayou Classic marks; they have asked Henderson to cancel the registrations, which he assigned to Shelton in 2013. The foundation considers the registrations improper, and in court filings accuses both men of using them for profit and of intentionally misrepresenting themselves to the public and the Secretary of State.
Shelton, who later filed a counterclaim, argues that if both Southern or Grambling are harmed by his use of the trademark, their own negligence is to blame.
Leading up to the August settlement conference, Bourgeois also has ordered the parties to make a good-faith effort to negotiate and settle the case before their scheduled appearance in his chambers.
The foundation must submit a written settlement offer by July 20. If that offer is deemed unacceptable, Henderson and Shelton must respond by July 27. In the absence of a settlement, Bourgeois must be notified no later than noon on July 29.
—Alexandria Burris
