MarkIt to Market® - August 2019: Well Played - Why The Ohio State University's Trademark Strategy Isn't So Crazy After All

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Legal, sport, and popular press let out a collective chortle upon learning that The Ohio State University had filed a federal trademark application for the mark THE. Some debated whether the University would be successful in registering the most common word in the English language, while the less generous deemed the attempt “one of the sillier sports filings since Tom Brady pursued a 'Tom Terrific' trademark”  and pompous, stupid, ridiculous, and arrogant. Always ready to stoke the flames, rival University of Michigan piled-on with a tweet suggesting it should try to trademark the word OF.

All joking aside, The Ohio State University’s plan to register the THE trademark actually makes sense from a business and branding perspective; a quick look at the U.S. Patent and Trademark Office’s database reveals that quite a number of parties have registered the mark THE for everything from perfumes, metal hardware, career information services, and kitchen appliances, to battery chargers.

And, as University officials have been quick to explain, the trademark filing is part of a deliberate rebrand that started in 1986, when the University took steps to move away from OSU (which could also refer to Oregon State University and Oklahoma State University) to The Ohio State University. Evidently, the “The” has been part of the school’s name since 1878; The Ohio State University library website explains, “Legend… has it that 'The' was used to show the other colleges which institution was supposed to be the leader in the state - both in size and in financial support from the legislature.”

As a quasi Buckeye fan by marriage, it has always struck me how players, fans, and the school itself are all fanatics about emphasizing the THE portion of the name – whether while introducing players at the beginning of a football game, in recruiting ads, or when correcting my terminology when making plans for the upcoming game against Michigan (November 30). If anything, the school and the fans have set the groundwork for a secondary source argument, in the event the trademark application for the merchandise is refused on merely ornamental grounds.

In filing the application, The Ohio State University is also on trend in embracing brand nicknames – following in the footsteps of household nickname brands such as FedEx, Nick, Bud, BK, and AmEx. As with any other trademark, the key to creating a strong brand is to use it consistently, file early, and monitor and enforce against infringers.

The bottom line is that the press generated by the trademark filing has done nothing but enhance the brand significance of the THE mark – as vast swaths of the public are now aware that The Ohio State University is staking a claim in this mark as its own. And it certainly has helped the public distinguish between various similarly-named Ohio universities. Not such a crazy plan after all.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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