Game of Amateurs, Season 148, Episode 9: Battle of the OSUs
Side Note: Everything sounds so much cooler through a Game of Thrones-esque lens, am I right?
I know what you are thinking. "Why would I care about anything related to Ohio State?" Ok, my Wolverine ego may be slightly kidding, but in all seriousness, this trademark question is significant because the outcome can affect other universities. For example, what if in addition to the list of registered marks like the Standalone Block M, the University of Michigan attempted to file an application for "U of M" or "UM" to be a federal registered trademark (®) rather than asserting that it is merely a protected trademark that is not registered (™)?
In a world where college athletics is undeniably a business - a BIG business, at that - and where the NCAA itself has trouble justifying its own regulations, laying down the law on who can do what actions (that, FYI, all come down to making money) and where they can or cannot do those actions lawfully will have inevitable consequences. For those of you who have not heard, Ohio State filed an application with the United States Patent and Trademark Office (USPTO) for "OSU" to receive federal trademark protection back in February. Specifically, Ohio State wants to register its trademark to protect against unlawful uses on apparel. Each portion of the application information below is meaningful. So, take note, because we will define trademarks, draw out their metes and bounds, speculate on why Ohio State would file an application with the United States Patent and Trademark Office (USPTO), and demonstrate how the Battle of the OSUs can impact the business of college athletics.
Image of the Trademark Electronic Search System (TESS) result, see http://tmsearch.uspto.gov/bin/gate.exe?f=tess&state=4807:h49qrl.1.1
What are trademarks?
The USPTO defines a "trademark" as a "a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others." In other words, trademarks are source identifiers. These source identifiers are protected so long as they are actually "in use"; trademark rights derive in common law based on their use in commerce as opposed to deriving from registration. This characteristic makes trademarks different from copyrights and patents because, in application, a trademark does not expire after a particular number of years and can last as long as a party continues to use the mark to indicate the good's source. Also, since trademark rights do not derive from registration, registration is not required, but it does grant numerous advantages. Registering a trademark with the USPTO gives other parties notice of your claim, a presumption of ownership at law in an infringement case, and exclusivity within the metes and bounds of the mark's registration among other benefits.
There are two different designations a source can use on their marks:
® can be used when the mark is registered with the USPTO, and
™ can be used when the source is adopting the mark as a "common law" trademark, regardless of any intent to register in the future.
** For example, you may have noticed that I assert "Sports Law Blonde" on this website's header as a trademark with the ™ designation, Sports Law Blonde™, to indicate that whenever you see that phrase on something, I am the source! Maybe I will register my brand name one day but maybe not. I have that flexibility because nothing of the sort is registered at the moment.
What does a trademark protect against?
Trademarks are meant to be source identifiers. Therefore, trademark law is designed to protect against other uses that would create a likelihood of consumer confusion as to the source of the good. If a consumer sees an allegedly infringing mark on a good that causes the consumer to believe that good is associated with a different source that has a sufficiently similar mark on similar goods, then a likelihood of consumer confusion exists. The elemental focus is on the consumer market here, but the real catalyst behind asserting trademark protection is openly for the source's monetary benefit and/or brand protection as that source is often losing revenue, brand value, or reputation due to the infringement. In short, trademarks protect against consumer confusion and infringing uses.
What does all the information on Ohio State's "OSU" trademark registration application mean?
Let's rip apart what each portion of the image above means:
Word Mark: OSU
An applicant can file either a word mark, which is in a standard character format, or a design mark, which is in a stylized special form. Words marks are broader and without regard to style, font, size, etc., whereas design marks are a graphic design or image that may have those particular features (e.g., logos are stylized marks). Here, Ohio State wants broad rights to "OSU" and to protect the wording regardless of the style used. Its rights would not be limited to a particular font or to any particular colors. Its rights would extend beyond scarlet and gray uses.
Goods and Services: Clothing and headgear, namely, t-shirts, shirts, hats, and headgear. FIRST USE: 1975. FIRST USE IN COMMERCE: 1975.
An applicant is required to identify a class of goods that it is seeking protection within. Since trademark protection extends only so far as the mark's actual use, the applicant is forced to draw out the boundary lines of its market. There is even an Acceptable Identification of Goods and Services Manual to help applicants select wording that properly identifies the types of goods on which the mark is being used or will be used. Here, Ohio State wants to receive protection within the apparel market, which is why it selected "clothing and headgear" and went on to properly specify the goods market with acceptable language suggested in the ID manual. So, if someone wanted to use "OSU" on different goods like car accessories or "Beat OSU" banners, those uses would not infringe on this application's sought after rights.
"First use" is the date the mark was first used anywhere on the good or in connection with the goods as described in the application's class identification. "First use in commerce" is the date the mark was first used in commerce on the good or in connection with the goods as described in the application's class identification. Sometimes these dates are the same, but sometimes they are different. Here, Ohio State identifies both as 1975, which seems accurate and would not be contested.
Mark Drawing Code: (4) Standard Character Mark
This explains how the mark is coded in the USPTO's automated system. It is what it is for organization purposes.
Serial Number: 87330195
If you want to look up a mark, use this! It is the registration number in the system that one can use to view the status, information, and documents related to the pending or registered mark.
Filing Date: February 9, 2017
This is the date on which the complete application is filed. It is pretty straight forward.
Current Basis: 1A
This and the Original Filing Basis below expresses the basis on which an applicant is filing for protection straight up from the Lanham Act (aka the US Trademark Act). It can be either the use in commerce basis [section 1(a)], the intent-to-use basis [section 1(b)], foreign commerce basis [section 44(e)], or foreign application basis [section 44(d)]. Here, Ohio State is already using "OSU" on apparel goods and claimed both the Original & Current Basis properly as 1A.
Original Filing Basis: 1A
See above.
Published for Opposition: May 2, 2017
After a party files a trademark application with the USPTO, it will be published for opposition so that everyone is on notice. Thus, anyone who may be damaged by the proposed mark's registration can challenge it. The party must file the opposition within 30 days of publication unless it requests and is granted an extension from the USPTO. Additionally, that extension cannot be longer than 180 days total from the date it was published for opposition.
Owner: The Ohio State University [& address]
A trademark owner can be an individual or a business or legal entity. Here, the university is identified as the "OSU" trademark owner.
Attorney of Record: Samantha M. Quimby
This is also straight forward. The attorney kind of acts as the point of communication with regards to the mark.
Prior Registrations: 1121595; 4035057
This is also straight forward but a lot more interesting! These registration numbers in the system show earlier files. Here, Ohio State has two registrations on point for "OSU" in different classes from the 1970s. The first one (1121595) recognizes "concurrent use" with Oklahoma State (1121596) in sports events and recreation programs, entertainment, and education, and it lists certain geographical regions in the Other Data section. The second one (4035057) specifies in which geographical regions Ohio State claimed protected use.
Type of Mark: Trademark
An applicant may file either a trademark, acting as a goods source identifier, or a service mark, acting as a service source identifier. Often times people talk about them all under the "trademark" umbrella, but there is that technicality.
Register: Principal
Weirdly enough, there can be two separate registers for a mark: the Principal and the Supplemental. The Principal Register is for marks with acquired distinctiveness, and the Supplemental Register is for marks that cannot be registered in the Principal at that time but as it becomes better known could act as a source identifier and eventually meet the eligibility requirements for the Principal. Here, Ohio State is claiming that "OSU" meets the source identifier status to be in the Principal Register.
Live/Dead: LIVE
Think of "live" marks as being active and in use. A mark can be "dead" or abandoned, which means you could technically file a similar trademark application with the USPTO because it is no longer under federal protection, but the owner may still be asserting common law rights and could then file a notice of opposition against registration.
Why would Ohio State want trademark protection here, & WILL IT WIN?
Ohio State has been suing a lot of people and businesses of all sorts for trademark infringement lately. I would not doubt that it is getting tired of lacking a legal presumption of exclusivity in defending its "OSU" mark. It wants to make its life easier, but in doing so, it would make life harder on many other parties. Heck, maybe that is what it wants - to show that it is THE OSU and that it alone owns "OSU" for one of the largest revenue pieces in the college athletics business pie. This would not affect just sports but all the apparel a university could sell, but in many cases, the sports culture is what sells a school.
In the college athletics world, three universities refer to themselves as "OSU" and get recognized as "OSU" at a nationwide level:
- The Ohio State University in Columbus, OH (Big Ten Conference)
- Oklahoma State University in Stillwater, OK (Big 12 Conference)
- Oregon State University in Corvallis, OR (Pac-12 Conference)
Each school has asserted its own respective trademarks since the 1970s. Ohio State and Oklahoma State have even entered into agreements for concurrent uses that designate where each school can use "OSU". Given the laws of the land, Oklahoma State got a bit more aggressive and requested an extension to file an opposition to the mark's registration. The USPTO granted the extension so that Oklahoma State has until the end of August to file. Once they do file, the USPTO will declare an interference and schedule a hearing to take place before the Trademark Trial and Appeal Board. Oklahoma State will be able to dish out all the reasons they are against this registration at the hearing, and major things could go down at the hearing's conclusion. The Patent and Trademark Commissioner could (a) refuse to register the mark; (b) register the mark to whoever is found to be entitled to its ownership; or (c) order concurrent registration of marks that include special restrictions or conditions on their use to prevent the likelihood of consumer confusion.
If the schools had concurrent registration [situation (c) above] similar to the trademark situation in the '70s where they identify state-by-state and county-by-county who has federal protections, that would be totally fine and perhaps the best solution. The schools could use the phrase in whatever styles, whatever colors, whatever fonts they want so long as they stay within their lawful geographical market that is designed to cater to where consumers are likely to see "OSU" and think of that school, respectively. The schools would be able to receive full protections against infringing uses and tap into all the benefits that come with trademark registration because, ultimately, as long as a mark is unregistered, the owner cannot receive the awesome presumption of trademark ownership if it has to fight legal battles against infringers big or small.
According to Oklahoma State spokesman Gary Shutt, "Those agreements have worked well for all involved." He went on to say, "We look forward to talking to Ohio State about joint use and making sure our universities and our fans are best served." Hopefully, Ohio State is seeking registration to make it easier to establish trademark infringement allegations in its legal battles and not to be jerks. The trouble, though, is that an agreement like that is not guaranteed. If Ohio State gets past opposition and wins the full broad protection, then I would need to write an entirely separate post or series of posts on the resulting issues. What affects one school affects schools across the board.