The “O” Argument

There is a legal presumption of validity and ownership for a United States federal trademark on the Principal Register, and a presumption of the brand owner’s exclusive right to use the mark nationwide in connection with goods or services listed in the registration. Be that as it may, trademarks, generally a word, phrase, symbol or design that distinguishes one entity’s goods from another, are frequently used inappropriately or co-opted by those who do not have such rights. It falls upon the trademark owners, then, to protect and defend their marks.

How do trademark owners, particularly large organizations with numerous marks, keep track of their intellectual property? They either monitor the marks in-house or, frequently, outsource to professional gatekeepers that monitor brands via continuous global search engines. Once potential encroachment is discovered, trademark owners have several options, in particular, to challenge another entity’s trademark registration or application. Depending upon the circumstances,  generally, one may 1) challenge a trademark registration issued by the USPTO by filing a petition to cancel the registration with the Trademark Trial and Appeal Board (TTAB); 2) challenge an application for trademark registration by filing an opposition with the TTAB within 30 days after it is published in the Official Gazette; 3) file a declaratory judgment lawsuit, asking a court to declare that a mark does not infringe the trademark owner's mark, and/or that the trademark owner's mark is invalid and; 4) assert an affirmative defense or counterclaim challenging the validity of the trademark.

Recently, a large and well-known entity, The Ohio State University, took up the gauntlet in defense of its “O” word mark (U.S. Trademark Nos. 4458983, 2064906, 2689612). Specifically, the University filed a Notice of Opposition with the Trademark Trial and Appeal Board of the United States Patent and Trademark Office in late August opposing The Board of Regents of the University of Oklahoma’s trademark application, which was filed in December 2017, of an image of a drum major with a block “O” on the front of the uniform (87712138). The Ohio State University argues that since 1898, it has used its block “O” mark in connection with Ohio State athletic and recreational programs and events by displaying it on the uniforms of student athletes, cheerleaders, drum majors and marching band members, as well as other promotional materials.

Ohio State further contends its block “O” mark is “the heart of the branding and image of Ohio State” and is even “permanently displayed in the middle of the football field at Ohio Stadium where millions of viewers have seen the Ohio State Buckeyes football team play its home games and have cheered on Ohio State’s marching band as it performs its famous ‘Script Ohio.’”

Previously, Ohio State disputed with Oklahoma State over the acronym “OSU.” Ohio State and Oklahoma State came to a co-existence agreement that each can use the abbreviation as long as it is not combined with the other school’s mascot.

The current rift between the universities is dependent upon whether the Board agrees with Ohio State’s argument that Oklahoma’s mark is so similar that confusion is likely and, that as Ohio State states in its opposition, “consumers will naturally gravitate to the lettering on the chest to identify the source of the services promoted by the Applied-for Mark.” Whether an image of a drum major with a letter “O” on a uniform shirt is confusing as compared to the “O” on Ohio State’s football field remains to be seen.—Ginny Guidry