OSU vs. OSU

Instead of facing off on the athletic fields, Ohio State University and Oklahoma State University are currently engaged in a different contest - a trademark dispute before the United States Patent and Trademark Office.  Earlier this year, Oklahoma State signaled its objection to Ohio State's trademark application seeking to protect the use of the mark "OSU" on shirts, hats, and baseball caps.

From the Columbus Dispatch:

Ohio State University, which already owns a host of trademarks, filed an application in February with the U.S. Patent and Trademark Office, seeking to trademark “OSU,” specifically on clothing and apparel.

But another university that holds the acronym near and dear is stepping in.

Oklahoma State University filed for an extension with the U.S. Patent and Trademark Office, indicating it plans to file a notice of opposition to the trademark request. The office approved that request, granting Oklahoma State until the end of August to file its objection.

These actions are a normal part of the trademark application process. The application timeline includes a period of public notice designed to permit other parties who believe they may have a claim to the mark to object to the mark's registration. 

When an objection is filed, the parties often try to resolve the matter informally through a shared use agreement.  In this case, the universities are expected to reach an settlement which is mutually acceptable to both OSUs.

Trademarks that Disparage, Part II

A previous blog post discussed the United States Supreme Court's consideration of Lee v. Tam, a case involving whether an Asian-American rock band was permitted to register a potentially offensive trademark.  In a 7-0 decision this week, the Court sided with the band.

More from NPR News:

Members of the rock band The Slants have the right to call themselves by a disparaging name, the Supreme Court says, in a ruling that could have broad impact on how the First Amendment is applied in other trademark cases.

The Slants' leader Simon Tam filed a lawsuit after the Patent and Trademark Office kept the band from registering its name and rejected its appeal, citing the Lanham Act, which prohibits any trademark that could "disparage ... or bring ... into contemp[t] or disrepute" any "persons, living or dead," as the court states.

After a federal court agreed with Tam and his bands, the Patent and Trademark Office sued the band to avoid being compelled to register its name as a trademark. On Monday, the Supreme Court sided with The Slants.

"The disparagement clause violates the First Amendment's Free Speech Clause," Justice Samuel Alito wrote in his opinion for the court. Contrary to the Government's contention, trademarks are private, not government speech."

The decision is likely to have an impact on other pending disputes, including challenges to the marks held by the Washington Redskins.

All You Need is .... A Trademark?

From the U.S. Patent & Trademark Office:

Are you a solo performer?  A member of a band?  Do you want nationwide protection for your name?

As your music grows in popularity, so does your need to help consumers identify you as the source of your unique sound.  One way to do that is by registering your name as a trademark with the United States Patent and Trademark Office.  Federal registration provides nationwide benefits that you can use to enforce your trademark rights.

The U.S. Patent & Trademark Office provides the answers to many frequently asked questions regarding musical trademarks, such as:

• What happens to a trademark if the band's drummer, Pete is replaced by a new drummer, Ringo?  
• Can you object if a proposed mark is likely to cause confusion with your protected mark? 
• Which goods or services are used in connection with your mark?

In addition to obtaining trademarks, musical artists should consider forming a limited liability company to protect their assets or filing federal copyright applications to preserve rights in individual works.  Contact our office today if we can be of assistance with these or other legal matters related to your music.

Opening Day Read: Baseball Mascots and the Law

Just in time for Opening Day 2017, Attorney Christian H. Brill and Prof. Howard W. Brill have published a comprehensive examination of legal disputes involving mascots and America's national pastime.

"Baseball Mascots and the Law" discusses a variety of legal questions involving mascots, such as:

• Can a Dayton Dragons fan sue if she was distracted by a mascot’s performance when she was injured by a foul ball?
• Do the actions of an “unofficial mascot” tarnish the protected trademarks of the Chicago Cubs?
• Can a Pittsburgh Pirates mascot be fired for disparaging comments posted on social media?
• Does the arrest of protestors burning a Cleveland Indians mascot effigy violate free speech rights?

Originally presented at the 27th Cooperstown Symposium on Baseball and American Culture at the National Baseball Hall of Fame and Museum in Cooperstown, New York, the article covers such areas of law as tort law, intellectual property law, and employment law.

The entire article is available from the Kansas Law Review.

Trademarks that Disparage

The United States Supreme Court recently heard oral arguments in Lee v. Tam, a case involving the denial of a trademark registration for an Asian American band called The Slants. The U.S. Patent & Trademark Office ("USPTO") determined that the mark would violate the Lanham Act, which prohibits registration of trademarks "which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute."

From the Washington Post:

The [USPTO] said the name was likely to disparage a significant number of Asian Americans. But founder Simon Tam said the point of the band’s name is just the opposite: an attempt to reclaim a slur and use it “as a badge of pride.” 

Tam lost in the first legal rounds. But then a majority of the U.S. Court of Appeals for the Federal Circuit said the law violates the First Amendment’s guarantee of free speech. The government may not “penalize private speech merely because it disapproves of the message it conveys,” a majority of the court found. 

The outcome of the Supreme Court case is likely to affect the legal case of the Washington Redskins, whose trademark registration was revoked in 2014 under the same disparagement clause. 

Justices questioned how the Lanham Act's restrictions on negative marks should be balanced with constitutional guarantees of free speech, and what limits should be placed on the USPTO when presented with potentially offensive marks.

A decision is expected later this year.

Super Bowl (TM) LI

Ever wondered why references to this week's football game between the Atlanta Falcons and the New England Patriots avoid certain words?

From our 2015 blog:

Sunday's football game ... will bring many references to "The Big Game", "The Professional Football Championship Game", "The Be All End All of Football Games", and even "The Superb Owl". But why?

The answer comes from trademark law and the aggressive actions taken by the National Football League to protect its rights to the phrase "Super Bowl".  For example, in 2015, the league opposed a trademark application for the phrase "Souper Bowl" which was to apply to certain drinkable soups.  

Our recommendation to businesses remains the same:

The bottom line to remember? Don't imply that you have any official connection to, endorsement by, or license to use the National Football League's trademark for "Super Bowl." 

NHL Expansion Team Faces Trademark Fight

The newest National Hockey League team - the Vegas Golden Knights - is facing a legal battle before its first puck even drops on the ice.  The U.S. Patent and Trademark Office recently issued an Office Action refusing the team's trademark registration, citing a likelihood of confusion with the College of Saint Rose Golden Knights,

The franchise (which is already selling merchandise with its name and logo) has six months to respond to the Office Action and does not plan to change its name.

From ESPN.com:

"We consider this a routine matter and it is not our intention to reconsider the name or logo of this franchise," NHL deputy commissioner Bill Daly said in a statement Thursday. "We fully intend to proceed as originally planned, relying on our common law trademark rights as well as our state trademark registrations while we work through the process of addressing the question raised in the federal applications."

The United States Army has also signaled its opposition to the "Golden Knights" moniker.  The Army's demonstration parachute team has been known as the Golden Knights since 1962, but the name was never protected by federal trademark law.

From the Washington Post:

“For us, the bottom line is the (perceived) connection between the Army and the professional sports team,” [Army spokesperson Alison] Bettencourt said, declining to answer whether the Army will ask the Vegas Golden Knights to change their name before the military’s review is completed.
 
“Our interest in this announcement is meant to protect the proud history of the Army’s Golden Knights and their vital role in telling the Army story and connecting America with their Army,” Bettencourt told the [Fayetteville] Observer.

For comparison, the Columbus Blue Jackets own numerous trademarks, including registrations for CBJ, Blue Jackets, Let Fandom Ring, We Are The 5th Line and a team logo featuring a cannon.

Ohio State Seeks to Trademark "Woody Hayes"

The Ohio State University has filed a trademark application to protect its use of the name of Woody Hayes, the legendary coach of five national championship-winning Buckeye teams.

From the Columbus Dispatch:

While this marks the second Ohio State coach whose name has been trademarked by the university — Urban Meyer's name was officially registered a year ago — the need for the designation predates the Meyer registration by many years, said Rick Van Brimmer, director of trademark and licensing services at Ohio State.

"We've been using Woody's image and name on products for years," Van Brimmer said. "But we've had an increasing number of people using our marks. This helps us in the long run."

The use of Hayes' name "started very innocently, with 'Woody' on the back of a hat, which we called 'the Woody Hat' because it was the kind of hat he wore with the block 'O' on the front," Van Brimmer said.

The trademark application is currently pending before the U.S. Patent & Trademark Office.

NCAA Tournament to Cost Employers $3.9 Billion in Lost Productivity

Even though the Buckeyes are not participating this March, Ohio employers should not forget about the impact that the NCAA men's basketball tournament can have on the workplace. 

From the Columbus Dispatch:

Distracted workers filling out NCAA tournament brackets and watching games at the office are expected to cost their employers $3.9 billion in lost productivity this week.

That's according to placement firm Challenger, Gray & Christmas, which estimates that the average worker will spend three hours of work time on March Madness.

The firm estimates that 20 percent [of] employed Americans could join office pools this year.

As you plan for March, don't forget to check out our trademark and employment tips to help employers manage the madness.

Protecting Your Trademark Overseas

A federal trademark registration with the United States Patent & Trademark Office (USPTO) is limited to protection within the United States. Outside of the country, similar marks are not automatically preempted without an additional filing (and even if they are, may be burdensome to enforce). You might be surprised to stumble across, for example, an Applebee’s restaurant near Shakespeare’s Globe Theater in London or an Old Navy café not far from Paris’s Luxembourg Gardens.

However, registering your trademark internationally is not as burdensome as it may seem. The Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (Madrid Protocol) is an international treaty that allows a trademark owner to seek registration from any of the 96 parties with a single application. Instead of requiring individual applications in the language of each country where an applicant desires protection, the Madrid Protocol allows the applicant to file a single international registration through the United States Patent and Trademark Office. An international application may be filed electronically using the Trademark Electronic Application System for International Applications.

While every applicant may not need international protection, it may be wise to consider international registration if you anticipate using your mark overseas or know of potentially infringing marks. More information on the Madrid Protocol and international applications is available from the USPTO.

Baseball Mascots and the Law

Attorney Christian Brill is speaking this week at the 27th Cooperstown Symposium on Baseball and American Culture at the National Baseball Hall of Fame and Museum in Cooperstown, New York.  The presentation, made with Prof. Howard W. Brill, is entitled “Baseball Mascots and the Law” and covers such areas of law as tort law, intellectual property law, and employment law.

Brill will discuss a variety of legal questions involving mascots, such as:

• Can a fan sue a team for injuries resulting from objects thrown by a mascot?
• Can a California or Ohio plaintiff sue if he was distracted by a mascot’s performance when he was injured by a foul ball?
• Is a mascot’s act involving a large purple dinosaur trademark infringement or parody?
• Do the actions of an “unofficial mascot” tarnish the protected trademarks of a baseball franchise?
• Can a mascot be fired for disparaging comments posted on social media?
• Does the arrest of protestors burning a mascot effigy violate free speech rights?

The Cooperstown Symposium on Baseball and American Culture, co-sponsored by SUNY Oneonta and the National Baseball Hall of Fame and Museum, examines the impact of baseball on American culture from interdisciplinary and multi-disciplinary perspectives.

March Madness (TM)

As they do every March, words like "Cinderella", "bracket", and "madness" have again begun to take on new meaning.  But, just like the phrase "Super Bowl", businesses should be wary of using the trademarked term "March Madness" or risk facing allegations of infringement.

The roots of March Madness go back to 1939, when an Illinois High School Association (IHSA) official named Henry Porter apparently coined the phrase to describe the state basketball tournament.

From the Chicago Tribune:

"A little March madness may complement and contribute to sanity and help keep society on an even keel," [Porter] wrote.

Three years later, he punctuated his point with a poem, "Basketball Ides of March," which included these lines: "The Madness of March is running. The winged feet fly, the ball sails high. And field goal hunters are gunning."

In 1982, announcers began to use March Madness to describe the National Collegiate Athletic Association's men's basketball tournament, and in 1996 the IHSA sued to protect its trademark rights in the phrase.

As a result of the litigation, the NCAA and the Illinois association reached an agreement to create an new entity - March Madness Athletic Association, LLC  - which now holds the trademark to "March Madness" and regularly takes action to enforce its mark.

The bottom line? In addition to determining how, if at all, employees should participate in the tournament, employers should be careful not to imply that they have any official connection to the NCAA contest.

Trademarks and "The Big Game"

Sunday's football game between the Seattle Seahawks and the New England Patriots will bring many references to "The Big Game", "The Professional Football Championship Game", "The Be All End All of Football Games", and even "The Superb Owl". But why?

From the CommLawBlog:

As we have reported every January for years now, the term “Super Bowl”® – and a surprising number of other “super” terms (think “Super Sunday”®, “Super Bowl Concert Series”®, “Super Bowl of Golf”® – oops, that last one is registered to the National Football League Alumni, Inc.) – have been registered as trademarks by the NFL. That means that, while those terms can be used in certain limited contexts, as a general rule they may not be used in any commercial promotions. No advertising of your own events, no advertising of client-conducted events, sales, promotions, no contests, no nothing. Nada. Zip. Zilch. 

As a result of the NFL's aggressive steps to protect its trademarks, businesses have had to talk about Sunday's big event in other ways.

From the Associated Press:

It is the game that must not be named--at least not without permission. 

For most people, the game Sunday between the New England Patriots and Seattle Seahawks is the Super Bowl. But for many business owners, it's simply the "big game" or "game day." 

Radio hosts are tripping over their tongues and airport signs are carefully worded to keep from referring to it as the Super Bowl, a trademarked name the NFL strictly polices. Mom-and-pop shops and large companies hoping to cash in on the game--but also don't want to run afoul of league lawyers--have found ways to color inside the lines. 

The bottom line to remember? Don't imply that you have any official connection to, endorsement by, or license to use the National Football League's trademark for "Super Bowl."

The Benefits of Federal Trademark Registration

Registering your business’s trademark with the United States Patent & Trademark Office (USPTO) is not a requirement for protecting your mark. However, any “common law” rights based on the use of your mark are far more limited than the federal protections. For example, although you can file for trademark protection in Ohio, the state’s trademark statutes do not prevent someone from using the same mark in Indiana. A business which later discovers an existing trademark (like this North Carolina taco restaurant chain) could be forced to rebrand itself in order to avoid claims of infringement. 

Although you may still be able to establish rights based on your legitimate use of the mark, there are significant advantages to federal trademark registration.  The USPTO lists at least five important benefits of registration:

1. Constructive notice nationwide of the trademark owner's claim. Any potential users of the same mark are presumed to know that your claim is federally protected, even if the infringer does not have actual notice. For example, even if a soft drink maker had never heard of Coca-Cola and acted in good faith, his attempt to trademark the new drink name Koca-Cola would likely be denied because he is assumed to know that he is infringing.


2. Evidence of ownership of the trademark. Federal registration proves that you have the exclusive right to own and use the mark nationwide, barring others from trademarking the same mark or claiming ownership.


3. Jurisdiction of federal courts may be invoked. If your mark is federally protected, you can seek to have a trademark infringement case heard in federal, rather than in state, court.


4. Registration can be used as a basis for obtaining registration in foreign countries.  Marks can also be protected in foreign countries; however, in order to register your mark in a foreign country, you must first have a U.S. registration.


5. Registration may be filed with the U.S. Customs Service to prevent importation of infringing foreign goods. Once your mark is federally registered, it can be filed with U.S. Customs and Border Protection to stop imitation foreign goods from infringing on your protected mark. This can prevent infringing goods from being imported, as in recent cases involving counterfeit Hermes handbags or Levi’s jeans.

Other important advantages of federal trademark registration include the right to use the ® trademark symbol and the potential of receiving higher damages in a lawsuit.

As a result, in order to fully protect your business's trademark, federal protection is a must.