Trademark infringement vs. using counterfeit marks

The school can go after you for damages, disgorgement of all profits, an injunction against further acts of infringement, punitive damages, treble damages, attorney's fees, and costs.

What's your confusion between the types of liability you're on the hook for? Counterfeiting usually applies to selling someone else's fake goods, and here you've sold your own fake goods.

But the point is that you should just stop your illegal conduct. Since you knowingly violated some other rightsholder's rights, you're more susceptible to punitive damages, treble damages, and attorney's fees.

Disclaimer: Please note that this answer does not constitute legal advice, and should not be relied on, since each state has different laws, each situation is fact specific, and it is impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue. This answer does not create an attorney-client relationship.

This is very likely way too deep in the weeds but there's a technical distinction between a "counterfeit product" and an "infringing product." This distinction may be what's confusing you if you did some of your own legal research.

Strictly speaking, a "counterfeit" is a trademark that's identical or substantially indistinguishable from a registered mark. See 15 USC 1127.

So a "counterfeit product" -- the sale of which can trigger criminal penalties -- can only be one that unlawfully uses another's registered mark. Contrast that with an "infringing product" which means a product that unlawfully adopts either a registered mark or an unregistered mark. So all counterfeit products are infringing products but not all infringing products are counterfeit products.

At the end of the day only nit picky attorneys care about the difference. In normal language a counterfeit is the same as an infringing product and both are called "knock offs" or "replicas" or whatever other euphemisms that bootleggers label their unlawful wares.

To answer your question directly, if the UOT Longhorn is a federally registered trademark then, yes, you could be sued by UOT under the civil counterfeiting statute (15 USC 1114) and/or by law enforcement under the criminal counterfeiting statute (18 USC 2320).

You may also be confused by the concept in trademark law that in order to create trademark rights in a word or design you have to use the word or design AS A MARK and not simply as a nifty-looking design on a shirt (for example). But UOT has used its Longhorn design as a mark on many goods as a way to convey to consumers that the goods are made by, endorsed by, affiliated with, or sponsored by the university. In short, UOT created and owns those trademark rights. Which means that neither you nor anyone else can sell goods with that design because consumers will likely falsely believe that UOT -- not you -- is the source of your goods.