{"id":566,"date":"2019-11-01T14:52:52","date_gmt":"2019-11-01T14:52:52","guid":{"rendered":"http:\/\/blogs.luc.edu\/ipbytes\/?p=566"},"modified":"2024-07-13T07:57:22","modified_gmt":"2024-07-13T07:57:22","slug":"the-ohio-state-university-and-that-trademark-application","status":"publish","type":"post","link":"https:\/\/blogs.luc.edu\/ipbytes\/the-ohio-state-university-and-that-trademark-application\/","title":{"rendered":"THE Ohio State University and THAT Trademark Application"},"content":{"rendered":"\r\n

I will never forget the first time I heard it. It was in an information session hosted by my high school\u2019s college counseling department. The college counselor was talking about finding the \u201cright school for you\u201d by evaluating criteria like school size and location. He suggested, for example, if we liked the big, midwestern feeling of the University of Michigan campus, that we also consider visiting the University of Iowa or Ohio State University. And then it happened. He stopped, and with a wry smile said, \u201coh I\u2019m sorry, THE Ohio State University.\u201d I didn\u2019t end up attending OSU, as I chose the University of Wisconsin instead, but that memory resurfaced this summer after it was announced<\/a> that OSU had decided to attempt to trademark the word \u201cthe.\u201d<\/p>\r\n\r\n\r\n\r\n

<\/p>\r\n\r\n\r\n\r\n

In the intervening decade since that information session, by some twist of fate, I spent a couple years, post-undergrad, living adjacent to OSU\u2019s campus while working for the CDC. During my brief tenure in Columbus, I met OSU alumni of all types. One thing they all had in common was that they\u2019re very passionate about where they went to college. And why shouldn\u2019t they be proud? OSU is home to a powerhouse football program<\/a> and a marching band<\/a> to match. It is a premier research institution<\/a> with a renowned cancer hospital<\/a> attached to it. Not to mention, the campus is beautiful\u2014even as a loyal Badger<\/a> alumna, I have to admit Thompson Library<\/a> took my breath away the first time I walked inside its vast East Atrium.<\/p>\r\n\r\n\r\n\r\n

No one really knows for sure<\/a>, but perhaps it\u2019s that confidence and pervasive pride that encouraged the 1878 Ohio General Assembly to adopt a law changing the name of \u201cOhio Agricultural and Mechanical College\u201d\u2014a scrappy land-grant institution, the ninth of its kind in the state\u2014to \u201cThe Ohio State University.\u201d It\u2019s certainly with confidence and pervasive pride that the institution insists on being recognized by its full name today. Though subjected to much derision<\/a> by non-Buckeyes, it continues to market<\/a> itself wholeheartedly as THE Ohio State University.<\/p>\r\n

<\/p>\r\n\r\n\r\n\r\n

Making It (TM) Official <\/strong><\/p>\r\n\r\n\r\n\r\n

OSU\u2019s insistence on the use of its full name reached new levels this summer. On August 14, 2019, news broke<\/a> that the university had filed a federal trademark application<\/a> for the use of \u201cthe\u201d when used in association with the university\u2019s name or logo, specifically when printed on t-shirts and hats. According to the application, the purpose of the trademark is to protect assets of \u201csignificant value.\u201d And though it doesn\u2019t explicitly say so, one of those assets is almost assuredly the university\u2019s brand. After all, that\u2019s the primary purpose<\/a> of trademarks.<\/p>\r\n\r\n\r\n\r\n

Companies trademark words, logos, and even packaging that consumers associate with their products in order to indicate the source of the product. The goal is to prevent others from benefiting from or tarnishing the reputation and goodwill the trademarked brand has built. Ohio State has already trademarked<\/a> the acronym \u201cOSU\u201d (and due to a settlement deal, it shares the mark with Oklahoma State University), so it clearly cares about protecting its name from unauthorized use in commerce.<\/p>\r\n

<\/p>\r\n\r\n\r\n\r\n

An Anticipated Rejection<\/strong><\/p>\r\n\r\n\r\n\r\n

However, on September 11, 2019, the USPTO<\/a> issued an Office Action<\/a> rejecting OSU\u2019s trademark application. Trademark experts, including attorney Josh Gerban<\/a>, anticipated this outcome since the application was first posted on the USPTO\u2019s website. The application stated that the mark was \u201cused in commerce,\u201d a fundamental requirement for successful federal trademark applications. Consequently, the USPTO requires evidence of that \u201cuse.\u201d An applicant can demonstrate use by attaching a picture of the organization\u2019s goods with the trademark affixed to it. OSU attached two such examples (pictured here)\u2014a red t-shirt with THE emblazoned in white across the front, and a white baseball cap with THE embroidered in red. But it was the inclusion of these particular examples where OSU made a critical, and frankly rookie, error. Gerban explained<\/a> the mistake in a video posted to twitter:<\/p>\r\n\r\n\r\n\r\n

\r\n

“In order for a trademark to be registered for a brand of clothing, the trademark must be used in a trademark fashion. In other words, it has to be used on tagging or labeling for the products. In this case, just putting the word ‘the’ on the front of a hat or on the front of a shirt is not sufficient trademark use.”<\/p>\r\n<\/blockquote>\r\n\r\n\r\n\r\n

In the examples provided by OSU, \u201cthe\u201d is being used merely in a decorative fashion<\/a>. This is not an eligible \u201cuse\u201d under the federal trademark statute, precluding registration of the mark with the USPTO. \u00a0<\/p>\r\n\r\n\r\n\r\n

But, crucially, the USPTO never stated that the rejection was because \u201cthe\u201d cannot be trademarked, unlike some of the bigger headlines<\/a> on the topic would lead one to believe. In fact, in June, the Trademark Office accepted and is currently reviewing a similar application<\/a> from Marc Jacobs. Like OSU, the clothing brand hopes to trademark \u201cthe\u201d in association with its name, but they hope to use the mark in association with assorted bags and a variety of clothing items (i.e.<\/em> THE BACKPACK MARC JACOBS). But unlike OSU, it submitted acceptable evidence of \u201cuse\u201d in its application, like how it will be featured on product tags.<\/p>\r\n

<\/p>\r\n\r\n\r\n\r\n

A Futile Exercise\u2026 or Savvy Marketing?<\/strong><\/p>\r\n\r\n\r\n\r\n

It is a little curious how an institution as large, well-funded, and respected as OSU could make such an obvious mistake on a trademark application. Sure, trademark applications aren\u2019t that expensive (according to OSU\u2019s application, it paid a $275 fee), and the university has six months to appeal the USPTO\u2019s decision and revise its application to include proper examples, but why submit a half-baked application and subject the institution to derision<\/a>?<\/p>\r\n\r\n\r\n\r\n

If you ask me, timing is everything. OSU\u2019s 2024 undergraduate application cycle opened August 1, 2019. Exactly two weeks later, news of the university\u2019s most recent, and arguably controversial, trademark-scheme broke. What better way to drum up out-of-state interest in OSU than by creating a media frenzy? Especially a frenzy rooted in institutional identity and pride. No longer will OSU have to bank on its full name coming up, half-jokingly, in a high-school college counselor\u2019s presentation; it made its name national news all by itself.<\/p>\r\n\r\n\r\n\r\n

Besides, the application didn\u2019t have to actually generate a registered trademark\u2014trademark registration isn\u2019t technically necessary<\/a> to protect the mark, just helpful in future litigation. And OSU already has several registered trademarks to genuinely protect its brand. All it could have reasonably expected from this clumsy application were headlines. And those it received.<\/p>\r\n

<\/p>\r\n\r\n\r\n\r\n

\r\n
\"\"\r\n
Elise Fester<\/em>
Assistant Blogger<\/em>
Loyola University Chicago School of Law, J.D. 2021<\/em><\/figcaption>\r\n<\/figure>\r\n<\/div>\r\n","protected":false},"excerpt":{"rendered":"

I will never forget the first time I heard it. It was in an information session hosted by my high school\u2019s college counseling department. The college counselor was talking about finding the \u201cright school for you\u201d by evaluating criteria like school size and location. He suggested, for example, if we liked the big, midwestern feeling of the University of Michigan campus, that we also consider … Continue reading THE Ohio State University and THAT Trademark Application<\/span><\/a><\/p>\n","protected":false},"author":7,"featured_media":0,"comment_status":"closed","ping_status":"closed","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[11],"tags":[322],"class_list":["post-566","post","type-post","status-publish","format-standard","hentry","category-trademarks","tag-trademarks"],"_links":{"self":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/566","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/users\/7"}],"replies":[{"embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/comments?post=566"}],"version-history":[{"count":3,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/566\/revisions"}],"predecessor-version":[{"id":4361,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/posts\/566\/revisions\/4361"}],"wp:attachment":[{"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/media?parent=566"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/categories?post=566"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/blogs.luc.edu\/ipbytes\/wp-json\/wp\/v2\/tags?post=566"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}