JONES DAY TALKS®: Buckeyes Win: Ohio State Secures Trademark for “THE”
The U.S. Patent and Trademark Office has awarded The Ohio State University a trademark for the word “THE,” for use in connection with apparel sold in "channels customary to the field of sports and collegiate athletics".
Jones Day partner Meredith Wilkes explains, how the University was able to obtain a registration, and the important lessons the action holds for companies and institutions seeking brand protection.
Meredith also talks about Jones Day’s Women in IP initiative and the group's plans for the second half of 2022.
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A full transcript is below.
Dave Dalton:
What's the most common word in the English language? A, and? Maybe it's “the”? Well if you follow college sports or trademark law you've probably heard that the U.S. Patent and Trademark Office has approved Ohio State University's application for a trademark on the word “THE”. There are of course some details and limitations. Jones Day intellectual property partner Meredith Wilkes is here to explain and talk about why the university's actions actually provide some very good lessons for organizations and companies that need to protect their branding. I'm Dave Dalton, you're listening to “the” JONES DAY TALKS®.
Dave Dalton:
Meredith Wilkes is a first chair IP trial lawyer. One of the Firm’s leading contacts for trademark, unfair competition and copyright matters, Meredith’s practice focuses on high stakes trademark, trade dress, trade secret, false advertising and design patent litigation leading matters for global brands in courts throughout the U.S. And regular listeners know that Meredith chairs the firms Women in IP Initiative, and that she's a regular and popular contributor to Jones Day Talks. Meredith, it's been a while, thanks for coming back to JONES DAY TALKS®, Women in IP.
Meredith Wilkes:
Thank you so much for having me Dave.
Dave Dalton:
All right, let me give us some background here in terms of what we're talking about today. If you've noticed when you're watching the pregame for an NFL game, or maybe an NBA game for all I know, or other sports, athletes from most schools just tend to say Tom Brady quarterback, Michigan, right? Things are a bit different coming out of Columbus, as TV viewers have noticed former Buckeye players the NFL introduce themselves during pregame saying they went to “THE” Ohio State University with kind of this little dramatic pause after over enunciating the “THE”. Okay, now here's where it gets strange. Back in 2019 it turns out the school filed to trademark “THE” and received that trademark approval in mid-June. Now this has been kind of a running not joke exactly, but people from other schools, who are associated with other schools, have kind of ribbed, yo “THE” Ohio State University, it's pretentious, it's bombastic, whatever it is, but suddenly I guess the trademark office took this seriously. So Meredith, can you give us some background on the case and explain exactly what the university was trying to achieve?
Meredith Wilkes:
Absolutely. And selfishly I'm always happy when something's going on in the news that actually I can talk about because as an intellectual property lawyer those opportunities don't come every day. The news is all about a trademark it's like oh, I can actually talk about what's happening here, so.
Dave Dalton:
Especially not on the sports page I'll bet, right, yeah.
Meredith Wilkes:
Right?
Dave Dalton:
Sure.
Meredith Wilkes:
And living in Ohio too. Your introduction here hits on “THE” key component to how this registration ultimately issued. I think that if you walked around, particularly here in Ohio, but anywhere, if you walked around and asked people to answer this question, when I say “THE” blank university what comes to mind? I think most folks are going to say Ohio State.
Dave Dalton:
Yep.
Meredith Wilkes:
And it's for that reason, although the word “THE” is a common word, it's for that reason that the can serve as a trademark in this context. So you asked me to get into a little bit of the background here, so let me do that.
Dave Dalton:
Sure.
Meredith Wilkes:
A couple years ago “THE” Ohio State University filed an application to register “THE”, and they did it to cover what we call a pretty narrow class of goods and services, they did it to cover the word “THE” in connection with clothing, and then even much narrower than that. Clothing, namely t-shirts, baseball caps and hats, so narrow class of goods to cover the word “THE”. And not long after that the trademark office issued what's called in Office Action, meaning they've reviewed the application and they have some comments basically on what's in the application. And in this case they refused the application for registration, and they did it on a couple different basis.
Meredith Wilkes:
The first was the prior filed application by Mark Jacobs saying that application is in front of you, it appears to be for similar goods and services, and so we're going to refuse the application for that reason in the event that matures into a registration. But also the more substantive refusal centered around what's called failure to function as a trademark, that it's "merely ornamental." And that means essentially that it's not working as a trademark, it's not telling people where the goods and services may come from, it's more of just a design.
Dave Dalton:
I see.
Meredith Wilkes:
And a design can't function as a trademark. And so that was the real substantive hurdle that had to be overcome in the first instance before they could get to sort of the second issue with Mark Jacobs.
Dave Dalton:
Right.
Meredith Wilkes:
And in response to that refusal their trademark counsel, Ohio State's trademark counsel, did a very nice job in putting together a very detailed, I think it was about a hundred page response, showing the trademark office that “THE” actually does serve a trademark purpose, it does function as a trademark so to speak. And they submitted a bunch of evidence hoping to convince the examiner that the word the does indicate the source. And they talked about the university's prominence in athletics and the hundreds of thousands of alumni, and the NCAA championships, and the millions of televised viewers that see The Ohio State University using “THE”, and as a source indicator as opposed to merely an ornamentation. And so that was sort of the early background with respect to the application, and then it gets more complicated after that.
Dave Dalton:
Okay. Well, I wanted pick up with something you said because the proper names of many universities, like the University of Michigan, that's my son's alma mater, or I don't know, is it the University of Tennessee, whatever it is, if that's actually the legal proper name, I'm probably using terms I shouldn't use here Meredith, but is because Ohio State... I guess it kind of grew out organically out of the athletic department and became sort of a not a punchline like I said before but something that became part of the sports vernacular, did that put them in a different space where they actually had a shot at trademarking like that. I mean, could the University of Florida done the same thing?
Meredith Wilkes:
So the critical issue is can the applicant, whether it's The Ohio State University or the Colorado State University, where I went to school.
Dave Dalton:
Aha, gotcha.
Meredith Wilkes:
Can they show a connection between the word “THE” and the institution itself, and I think that's where the hundred page submission that Ohio State University put into the trademark office really kind of moved the needle for the application.
Meredith Wilkes:
In that submission The Ohio State University talked about how “THE” became more than just an article, more than just the word T-H-E, and they said it probably happened in the '80s at some point in time when The Ohio State University moved away from OSU as it's branding and they pinpointed it I think to the early '90s when Robert Smith on Monday Night Football introduced himself, like in your intro, as hailing from “THE” Ohio State University and it kind of took off from there.
Dave Dalton:
Right.
Meredith Wilkes:
And since as early as 2005 “THE” Ohio State University has been branding “THE” and using “THE” prominently such that consumers would recognize “THE” as something coming from The Ohio State University, and that's really how you do that, that's how you get a word that's common in the English language to then be something more than just a word right, like in through the looking glass with Humpty Dumpty and Alice where he is like when I make a word, do a lot of work like that, I pay it extra. That's sort of what we're trying to do when you're trying to get something recognized and add vernacular and into the realm of being a brand, being a source indicator.
Dave Dalton:
Your Louis Carol references will never be wasted on me, I like them. So okay, many schools, probably every school of any consequence, is very productive of its trademarks, and rightly so. But again, and hey you've convinced me, I'm starting to get it now, but this was admittedly highly unusual. Was this necessary, this action, going after the trademarking of “THE”?
Meredith Wilkes:
Again, from the standpoint of the trademark lawyer's full employment act absolutely. Anytime you are investing in a brand, anytime that a brand owner is trying to draw a connection in the minds of the consuming public between what it's doing and its competitors, or some other choice in the marketplace, investing in it and trying to get protection around it is something that we typically advise our brand owner clients to do. And so making that type of investment in the marketplace and then also in the United States Patent and Trademark Office, trying to get registrations on your brands, we advise clients that's usually a good thing to try and do.
Meredith Wilkes:
This particular application that ultimately did mature into a registration is interesting also because there was somebody else in front of The Ohio State University that also had an application for “THE” in connection with apparel. And so once they got past this whole is this a trademark issue they then had to convince the examiner that The Ohio State University in connection with an apparel of that nature could coexist in a world with branded apparel goods owned by Mark Jacobs. And so then they had to go through that process and ultimately strike a deal with Mark Jacobs so that each could live in the apparel world essentially and both have trademark rights to the word “THE”, Ohio State's words that the Ohio State application got limited to a certain channel, college athletics essentially. And Mark Jacobs then limited their channel, their protection of “THE” to contemporary fashion channels, and that's how they resolved the issue, and that's ultimately how “THE” was registered to The Ohio State University for that narrow class of goods and services.
Meredith Wilkes:
So licensing and NCAA and for any university that's showing up in multiple national championships and that sort of thing is a big deal. There's big money associated with it, and with that sometimes she get some imitators, and I think probably one of the drivers, I don't know this, obviously I don't do work for The Ohio State University, but I think probably one of the drivers here it seems to me would be to combat counterfeiting.
Dave Dalton:
Sure, sure.
Meredith Wilkes:
That's one of the reasons you would want to get the registration there and keep the licensed merch, the authorized licensed merch, clean so that you don't have counterfeits flooding the market. And the way you do that is you protect a brand and then you enforce, and that's how you keep the trademark rights.
Dave Dalton:
Okay. So we assume that The Ohio State University and Mark Jacobs can coexist in that same world, and you kind of answered my question already, I was going to ask how broad this protection actually is. Sounds rather limited and not intrusive. We don't have to kick The Ohio State University a quarter every time we utter the word “THE” do we, it's very limited here.
Meredith Wilkes:
No, no, we don't. Under the trademark laws of the United States the rights are limited to the manner in which you're using the mark, so the goods and services on which you're using the mark, but then it only protects against confusingly similar use, not all use when we're talking about trademark infringement cases. And so right now the protection that exists by virtue of the registration covers the narrower class that we talked about, the t-shirts, baseball caps and hats sold through traditional collegiate channels.
Dave Dalton:
OK. So it's at least somewhat related to protecting merchandising rights. And I've got a note here that's $12 and a half million dollars a year for The Ohio State University. I got to say Meredith, that sounds low to me, but okay, that's what I found online it must be true right?
Meredith Wilkes:
If it's on the internet it's true.
Dave Dalton:
No doubt, if I'd only found it on Twitter to really verify. So all right, let's talk about something else in terms of where this decision might lead. Are there any lasting implications for trademark law, or maybe this really wasn't game changing if you'll pardon another sports analogy. Maybe it's just yeah of course this is how the decision was going to come down, but is there anything that you took out of the decision that says huh, maybe things might be a bit different moving forward?
Meredith Wilkes:
That's an interesting question Dave, and I did like the sports analogy.
Dave Dalton:
Thank you.
Meredith Wilkes:
There are 10 other registrations on the principal register for the word “THE” in connection with goods or services, 10 other live registrations, there are some others that are dead. And so in that respect the fact that the word “THE” is covered by United States trademark registration is not earth shattering and certainly not something that would garner a lot of attention I think but for the fact that this was a highly publicized application, and then of course a highly publicized registration when it issued.
Meredith Wilkes:
I think at the time that The Ohio State University filed the application my read was that the media was somewhat almost critical of the efforts to obtain the registration, and I think it's more because maybe sort of a general misunderstanding of process and effect as opposed to what The Ohio State University was trying to do. So taking efforts to protect that investment I don't think anybody would think that that's a bad idea. So I think the immediate and lasting implication in the broader sense is that there is a need to protect the brand and invest in the brand and make sure that the consuming public associates your terms with you. And when you do that you do have the ability to protect that investment. So I'm hopeful that maybe that's one of the longer sort of public awareness impressions that results from this.
Dave Dalton:
That's interesting. And I wouldn't have made that jump but you're right. I mean, there's a general awareness maybe brought out by something like this, a matter like this, that maybe wakes some people up in terms of hey, these things are valuable, these so-called intangible assets are worth protecting, and as odd as might have seemed to some people, they're trying to include the word the in their branding makes sense. Again, if it points some people away to better protecting some of these assets this is probably a great thing, and it's a great thing for all our friends in Columbus that's for certain. Hey, if you've got a minute can we talk about Women in IP Meredith?
Meredith Wilkes:
Of course, I'd love to, yes.
Dave Dalton:
You run and direct the Jones Day's Women in IP Initiative and great group, active group, lots of great events, programming, networking, mentoring, anything you'd want this sort of group to do in a large law firm you guys are doing. We have this little thing called the pandemic and the shutdown that thankfully we seem to be moving well past, so I'm imagining your events and your plans for Women in IP for the rest of 2022 are probably pretty exciting and worth noting. What's going on?
Meredith Wilkes:
Oh yeah. Well, thank you first of all for the kind words and the support. Our Women in IP Committee works really, really hard to do all of those things. We started off the year still sort of in pandemic mode and doing our CLE programming through web based only. And we did start off the year with Women in IP in the ITC event that was all WebEx and really a terrific program. The ITC last year had a record number of trials and we were fortunate enough to have our own Women in IP who'd been through some of those ITC proceedings together with some of our clients talking about best practices in ITC litigation, and so that was a great program.
Dave Dalton:
Nice.
Meredith Wilkes:
We just wrapped our leadership installment in Washington with Judge O'Malley who had recently retired from the Federal Circuit, and traces her roots to Jones Day in the Cleveland office as an associate, and that was a phenomenal program. Judge O'Malley talked with Jennifer Swize and Tracy Stitt and Shehl Wynne of our Washington office and just such a phenomenal discussion. But I have to tell you for me at least one of the best parts about it, in addition to everything that I got to learn, was the experience because we were back live again.
Dave Dalton:
Yeah, of course.
Meredith Wilkes:
And it was so nice to be back in person. We were still offering the program over the web too for folks to dial in and if they missed it we have recording available just you contact us at womeninip@jonesday.com, but so fantastic. So we're halfway through the year in terms of our programming and we have two more programs to go this year, and hopefully fingers crossed they will both also be live with people having the opportunity to dial in through the web and participate that way. Our global patent litigation installment will be fingers crossed in New York in September, and last time we had done a European and U.S. perspective, this time we'll do a U.S. China perspective.
Dave Dalton:
Oh, wow.
Meredith Wilkes:
So that should be-
Dave Dalton:
That's interesting.
Meredith Wilkes:
Yeah, it should be good. And then we'll round out the year doing a CLE program on brand focus where we're going to talk about the effects of the Trademark Modernization Act that's now been in effect for a short period of time and what that impact has been. And then also talk about the NFTs in the metaverse and all the brand issues that seem to be circulating around there. We've got the furry bag, Hermes Birkin thing happening and lots of stuff happening in the metaverse in branding and the tension that exists between sort of First Amendment expressive rights and brand on our rights, so round out the year there and hopefully you'll have us in for our year end Women in IP as well.
Dave Dalton:
You've got a blank check with me anytime I've told you that, and it remains true. This metaverse stuff has me fascinated, and we've got a murderer's row of lawyers, Jones Day, you know, Rasmussen and Josh Sterling, Dorothy Giobc\be you, I mean there are people that seem to really understand that, and I pretend to understand it for the podcast purposes and video purposes, but you guys are on it so that will be a great, great program. Sounds like you've got a lot coming up, it's great.
Dave Dalton:
Good program today. That was “THE” Meredith Wilkes talking about trademark law as pertains to The Ohio State University and their win several weeks back at the patent office. Meredith, thanks again for being here today.
Meredith Wilkes:
Thanks so much Dave.
Dave Dalton:
Take care, bye.
Dave Dalton:
For a complete biography and contact information for Meredith Wilkes visit jonesday.com, and please reach out to her directly if you're interested in any of the Women in IP events she mentioned. And be sure to check out our publications, videos, previous podcasts, blogs, and other topical content on the website's Insights page. Subscribe to JONES DAY TALKS® on Apple Podcast, Spotify, or wherever else you find your podcast. As always we thank you for listening, I'm Dave Dalton, we'll talk to you next time.
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