A trademark fight between two St. John’s universities is now in federal court in Minnesota.
COLLEGEVILLE, Minn. (FOX 9) – A trademark fight between two St. John’s universities is now in federal court in Minnesota.
Trademark dispute centers on recruiting and athletics
The Collegeville, Minnesota, school filed its complaint Wednesday in U.S. District Court in Minnesota against the New York school. The lawsuit says recent national use of JOHNNIES, Johnnie and Johnny is creating confusion in recruiting, athletics and merchandise.
Local perspective:
The complaint says the Minnesota school has continuously used JOHNNIES for its students and athletic teams since at least Sept. 1, 1900. It says the mark appears on its website, printed materials, athletic uniforms, branded merchandise and recruitment materials that are distributed nationally.
According to the filing, the Collegeville school mainly serves students from Minnesota and nearby states but also recruits nationally. The complaint says recent first-year classes included students from New Jersey, Maryland, West Virginia, Florida, Illinois, Texas, Arizona, California and Washington.
Timeline:
According to the complaint, the Order of St. Benedict applied for the trademark on Oct. 24, 2003, and the U.S. Patent and Trademark Office issued the registration on Oct. 12, 2004. The filing says the mark was assigned to Saint John’s on Sept. 7, 2012.
The complaint says Saint John’s sent a cease-and-desist letter on May 13 to St. John’s University Vice President and General Counsel Terryl L. Brown. The filing says the letter demanded that the New York school stop using the mark, remove it from materials and websites and sign a written agreement.
Complaint points to expanded New York use
The complaint says the New York school’s broader use is recent and appears across its website, social media, clothing and recruiting materials. The filing points to examples including a website virtual assistant called Johnny, a future-students page using Johnnies, “Jumpstart Your Johnnies Journey,” “Johnnies Day,” “Johnnies Vote,” the “Johnnies Blog” and “Johnnies Promise.”
The backstory:
According to the complaint, which cites the New York school’s athletics website, St. John’s teams were known as the Redmen beginning in the 1920s and the school changed that nickname to Red Storm in 1994. The filing says a Thunderbird mascot was chosen in 2009 and later named Johnny Thunderbird.
The complaint says any earlier use of Johnnie or Johnnies by the New York school had been minimal and used only for alumni. It says the current, broader use for students, athletics and recruiting came later and now overlaps with the Minnesota school’s market.
The complaint says the New York school held its first “Johnnies Day” in 2023 and now treats it as an annual event. It also cites a 2026–27 men’s golf schedule post that said “The Johnnies” would play 12 tournaments in 10 states, including Hawaii and California.
The filing also points to a 12-day fan vote between April 23 and May 4, 2009, when more than 11,000 votes were cast to choose the Red Storm mascot. According to the complaint, Saint John’s says the New York school’s teams also travel to, in and through Minnesota for events while using the disputed names on uniforms and in marketing.
What Saint John’s wants from the court
The complaint includes four claims and demands a jury trial. According to the filing, Saint John’s says the New York school kept using the disputed names after the May 13 letter and asks the court to step in.
The lawsuit asks the court to permanently bar the New York school and related parties from using JOHNNIES and similar marks for educational services, athletics, merchandise and related activities. It also asks for an order requiring removal of the material from websites, web addresses, marketing materials, social media accounts and merchandise within 30 days of a court order.
According to the complaint, Saint John’s also wants the other school’s profits tied to the alleged infringement, its own actual damages, possible enhanced damages, attorneys’ fees, costs and interest. The filing also asks the court to find that the conduct was willful.
What we don’t know:
The court filing does not include a response from St. John’s University in New York. It also does not put a dollar figure on the damages request, saying those amounts would be proven at trial.
The Source: A complaint Saint John’s University filed Wednesday, Nov. 4, in U.S. District Court in Minnesota.
