To "the" or Not to "the"? the Question Has Been Answered: an Examination of Trademark Bullying in the Context of the Ohio State University's Recent Trademark Registration

• Publication year: 2023

To "THE" or not to "THE"? The Question has been Answered: An Examination of Trademark Bullying in the context of the Ohio State University's Recent Trademark Registration

Jennifer M. Danker
University of Georgia School of Law, jwt74222@uga.edu

To "THE" or not to "THE"? The Question has been Answered: An Examination of Trademark Bullying in the context of the Ohio State University's Recent Trademark Registration

Cover Page Footnote
J.D. Candidate, 2024, University of Georgia School of Law. As a a proud graduate of THE Ohio State University, I sincerely thank the institution for the incredible professional, academic, and personal experiences it continues to afford me. Also, I offer my deepest thanks to my late parents. From my earliest days, you instilled the traditions and beliefs that make our alma mater unique and extraordinary. With a mix of gratitude and longing, I dedicate this Note to you, forever cherishing the memories we shared and the legacy you left behind.

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TO "THE" OR NOT TO "THE"? THE QUESTION HAS BEEN ANSWERED: AN EXAMINATION OF TRADEMARK BULLYING IN THE CONTEXT OF THE OHIO STATE UNIVERSITY'S RECENT TRADEMARK REGISTRATION

Jennifer M. Danker^*

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Table of Contents

I. Introduction...............................................................................................324

II. "THE" History...............................................................................................................325

III. Foundations of Trademark Law.........................................................327

A. Trademark Law: Where We Are and How We Got Here 327

B. The Lanham Act...............................................................................328

C. Trademark Liability Theories..................................................330

1. Trademark Infringement..............................................................331
2. Trademark Dilution ...................................................................... 332

IV. Trademark Bullying and Implications............................................333

A. Trademark Bullying.....................................................................334

1. What is Trademark Bullying, and How is it Perpetrated?.......334
2. Why do Mark Owners Bully?......................................................335
3. Bullying Implications: Chilling Free Speech, Suppressing Marketplace Competition, and Stifling Small Businesses.......337

B. Impact of "THE" Trademark......................................................339

V. A Path Forward..........................................................................................341

A. Sanctions Against Habitual and Attempted Over-Enforcers..........................................................................................342

B. Removing Enforcement from the Equation.....................344

VI. Conclusion....................................................................................................344

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I. Introduction

In recent years, large resource-rich institutions have been repeatedly labeled as "trademark bullies" due to their willingness to employ aggressive tactics to protect their marks.¹ oftentimes, these behaviors extend past an acceptable demonstration of a mark owner's recognized interest in defending their marks and creep into unlawful and unethical harassment or intimidation tactics.²

Recently the U.S. Patent and Trademark Office ("USPTO") issued a trademark to the Ohio State University ("OSU") for the word mark "THE."³ Proponents of this registration commend OSU for protecting its $12.5 million asset and cite its long-term branding strategy as the source of its success.⁴ However, critics of this registration view it as an endorsement of nebulous and crafty registration tactics that circumvent the true policy underpinnings of trademark law.⁵ This Note generally sides with the latter view, arguing that the recent registration provides OSU with a sword to wield against infringing and entirely lawful uses of the mark.

This Note proceeds in four parts; the first part describes the filing history of how "THE" was issued to OSU. Part II provides an in-depth explanation of the history and policy underpinnings of trademark law, and a description of the current state of United States trademark law and theories of liability. Part IV examines trademark bullying, how it is carried out and empowered by the current law, and its negative impacts on the marketplace, consumers, and producers. It

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also explores the likely negative impact on the marketplace, the chilling effect on speech, and the suppression of speech that OSU's registration will cause. Finally, it proposes potential remedies to disincentivize and curb bullying behavior by the University and similar actors.

II. "THE" History

The USPTO recently issued Registration No. 6763118 for the word mark, "THE," to OSU for use in connection with "clothing, namely, t-shirts, baseball caps[,] and hats "⁶ "THE Ohio State University" is a—now infamous—moniker touted by the prolific Columbus academic institution's students, faculty, alumni, and fans.⁷ Although the definite article "THE" in OSU's name has been formally recognized as part of its title since its renaming in 1878, its ubiquity in marketing, official communications, and culture has not.⁸ It is unclear exactly when the push to include and emphasize "THE" began. Evidence indicates, however, that the 1986 redesign of the University's logo added "THE" to "reflect the national stature of the institution" and a subsequent push by the University to move its branding away from being known as another "OSU."⁹

Although a rebranding campaign was well-underway for decades, OSU only formally filed a trademark application for the word mark "THE" with the USPTO on August 8, 2019.¹⁰ Originally, the institution claimed a current use in commerce (1(a)) filing basis.¹¹ However, the USPTO rejected the University's initial application on two grounds, (1) an application for the mark in connection with clothing and apparel predated the University's application, and (2) as demonstrated in the submitted specimen, OSU's use of "THE" was "merely ornamental."¹²

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OSU quickly remedied the issue underlying the first basis for rejection. It negotiated with the conflicting prior existing application's filer, Marc Jacobs, to make way for both entities' use in their respective markets.¹³ Marc Jacobs's amended application designated the use of the mark in connection with apparel "sold through channels customary to the field of contemporary fashion."¹⁴ Whereas OSU's amended application designated the use of the mark in connection with apparel "sold through channels customary to the field of sports and collegiate athletics."¹⁵

With the first issue settled, OSU filed a response to the USPTO Office Action, adding additional support to its contention that "THE"—rather than indicating the source of production—is a secondary source indicator or sponsorship indicator.¹⁶ The University argued that previous Trademark Trial and Appeal Board ("TTAB") decisions supported its contention, relying on a settled principle that ornamental material can be a source indicator if it "names the secondary source of the goods" or "it is ... a recognized trademark of [the] applicant['s] for other goods or services."¹⁷

Nonetheless, this argument failed because the proffered evidence only showed "THE," being sometimes emphasized but exclusively used jointly with "OHIO STATE UNIVERSITY."¹⁸ To succeed, the University must have demonstrated that "THE," alone, functioned as a source indicator for additional goods or services.¹⁹

After this loss, the University requested reconsideration by the USPTO and amended its filing basis to a Section 1(b) — intent-to-use — application.²⁰ To succeed in utilizing this basis, the University must have shown a "bona fide intention to use" the mark in commerce in the near future.²¹ To best ensure approval by the USPTO, it supplied evidence of an obvious source indicator on

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the tags inside apparel items.²² After publication for opposition, the TTAB registered the mark to OSU on the federal register.²³

Ill. Foundations of Trademark Law

United States trademark policy, statutory law, and common law root themselves in schemes and philosophies far older than our country. To adequately understand the current trademark bullying issue in the United States, it is imperative to understand the theoretical underpinnings, global history, and U.S. legal landscape of trademarks. This part first provides a brief global discussion of U.S. trademark law's historical and theoretical foundations. Then, it discusses the Lanham Act, the statutory scheme controlling the existence of trademarks in the United States. Finally, it describes relevant theories of liability for trademark infringement.

A. Trademark Law: Where We Are and How We Got Here

Merchants have used marks to identify the source of their goods for as long as the producer/consumer relationship has existed.²⁴ For example, evidence from over 3500 years ago shows ceramists often used marks to identify and distinguish the source of their clay-fired pots.²⁵ Likewise, while trading in the Mediterranean, Greek and Roman producers used marks on amphorae and vases to denote the source producers of wine and oil.²⁶ Moving into the Middle Ages, using marks expanded greatly into metalware, cloth, and eventually onto paper, partially due to the rise of artisan guilds.²⁷ These guilds allowed registered members to utilize marks authenticating and indicating the quality of goods in commerce.²⁸

Trademark jurisprudence abroad skyrocketed during the Industrial Revolution due to diminishing direct transactions between manufacturers and consumers.²⁹ Great Britain and parts of Europe enacted sweeping legislation

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protecting consumers and manufacturers from counterfeiting and other fraudulent activities.³⁰ The United States Congress followed...