October 10, 2018

Does Ohio State Own the O?

We recently looked at the idea of state universities claiming a (limited) monopoly on the right to use the name of their state on clothing and other items. At first blush it seems surprising that anyone can have the exclusive right to a state name, but trademark law allows it in the right circumstances, and with limitations.

This time we'll look at another university case, but perhaps an even stranger attempt to claim exclusive use â and one that may or may not wind up being successful.

In this case, The Ohio State University is claiming exclusive rights to the letter "O," or at least a particular look of the letter "O," and on that basis is challenging an application by University of Oklahoma to register a mark that includes an arguably similar O.

First, a little background. Part of the trademark registration process involves notifying the public that an application has been preliminarily approved for registration and giving others a chance to oppose registration. An application may be opposed for various reasons, but probably the most common is that the opposer thinks the mark shown in the application would create a likelihood of confusion with the opposer's mark. The opposition plays out before an arm of the USPTO called the Trademark Trial and Appeal Board. The Board considers a number of issues in determining whether the mark shown in the application would likely be confused with the opposer's mark, but the most important are almost always the similarity of the marks and the similarity of the goods or services the marks are to be used with. If the Board determines that the opposer has prior rights in its claimed mark, and that the applicant's mark would create a likelihood of confusion, it will not allow the applicant's mark to be registered.

Ohio State has registered two different versions of the letter "O." The version shown here

Scruton Ohiostate O1

is registered twice â once in a 2003 registration covering "clothing, namely, jackets, sweaters, hats and T-shirts," and later in a 2013 registration covering services including "providing college level sporting sport exhibition events and recreation programs."

A slightly different version, like this

Scruton Ohiostate O2 Jpg

was registered in 1997 for use with "clothing, namely, hats, caps, tee shirts, sweat shirts, sweat pants, shorts and sweaters."

In 2017, the University of Oklahoma applied to register this mark:

Scruton Ohiostate Okladrummajor

That application covers "entertainment, namely, live performances by musical bands," and it's obviously a stylized image of the drum major for the Pride of Oklahoma marching band. It does show an O on the drum major's chest.

Ohio State called foul (or asked for an official review, or threw a flag; it seemed like a lame sports metaphor is called for here). Wait a minute, OSU says, we have used the "block O" mark since 1898, and it's on lots of our products and used with our services, and it's right in the middle of our football field (more on that below), and consumers recognize it as referring to Ohio State, and it points "uniquely" to Ohio State, and we have registrations for the "block O" trademark. So Ohio State argues that Oklahoma should not be able to register its stylized drum major mark, because right on that drum major's chest is an O looking kind of like the OSU "block O."

Ohio State also claims that the "O" on that drum major's chest is the "dominant portion" of the mark Oklahoma is applying to register, which seems like it might be a bit of a stretch, and it also says that the "O" is the only indication of source in the drum major mark, which could be ignoring the fact that Oklahoma claims the entire drum major design as an indication of source. Perhaps a drum major in a distinctive stance could also be an indicator of source, unless that's just how drum majors walk. (Also, don't look now, OSU, but Oklahoma has another registered mark that somehow slipped through that has two O's in it.)

Scruton Ohiostate Soonerswagon Jpg

The matter will likely boil down to whether the two marks â an O and a stylized drum major in a rather unusual posture with an O on the shirt â are confusingly similar. One of the rules when considering confusion is that you are not to "dissect" the marks. That has nothing to do with high school biology class; it means that you are to consider the marks as a whole rather than to focus on one little aspect. A big question will be whether Ohio State's ownership of rights in the O are enough to prevent registration of a mark that has a lot going on apart from the O.

One thing that might come into play is how distinctive that Ohio State O really is, and how recognizable it is on the drum major logo. Oklahoma might point out that the University of Oregon also has a registration for a letter "O" that looks like this:

Scruton Ohiostate Oregono Jpg

That registration also covers services including collegiate athletic events and various kinds of musical performances and bands, and is quite a lot older than the Ohio State registration covering athletic events.

As of this writing, the University of Oklahoma has not responded to Ohio State's opposition. Unless the parties settle the matter, Oklahoma will file a document admitting or denying each of the allegations in Ohio State's notice, and setting forth any defenses it might have. OU fans can attest that defense has not been a strength lately.

As for that O in the middle of The Ohio State University's field, it may be that the OSU is a little more protective of their favorite letter after a 2017 incident in which Oklahoma quarterback Baker Mayfield celebrated a football victory on the O, a short clip of which you can see here.