By: Taylor Washington
After months of a boiling trademark dispute, Oklahoma State University and Ohio State University have agreed to call it quits and collectively share trademark rights in “OSU” on clothing and headgear.
For over thirty years, Oklahoma State University and Ohio State University have simultaneously held trademark registrations in the acronym “OSU.” However, their rights extended only to the use of “OSU” in connection with: (1) providing college sports exhibition events and recreation programs, (2) providing dramatical and musical entertainment events; and (3) providing college level educational courses. Oklahoma State’s trademark rights extended across 17 western and southern states, while Ohio State’s rights extended across 19 states in the Midwest and East coast. Both schools agreed to share rights in Iowa, designating certain counties to Oklahoma State and others to Ohio State.
In February 2017, Ohio State University inched up the competition as it filed a trademark application with the United States Patent and Trademark Office (USPTO) for the use of “OSU” on clothing and headgear, namely, t-shirts, shirts, hats, and baseball caps. However, this time, Ohio State sought trademark rights beyond its 19 Midwest and East Coast states and, instead, sought rights within the entire country, - due to drastic changes in athletic conferences and an increase in the national profile of collegiate athletics.
It has long been established that the USPTO will not allow two trademarks to co-exist if they will cause a likelihood of confusion. In evaluating whether a likelihood of confusion exists, the USPTO determines (1) whether the marks are used to identify similar goods and/or services and (2) whether the marks are similar in sound, appearance, and/or meaning. If the USPTO determines that the marks are indeed similar in sound, appearance, and/or meaning and are used to identify similar goods and/or services, then they will typically deny the latter applicant.
In this instance, there is no debate over the fact that Ohio State and Oklahoma State both seek to use the “OSU” mark on similar goods, namely clothing and headgear. Further, in allowing both universities to register said mark, there is no question that they will not only be similar but completely identical in sound and appearance, with the only difference being their meaning when used by each respective university.
Nonetheless, the two may indeed co-exist despite such striking similarities and virtual identicalness, due to an agreement reached between the universities. Representatives from both universities believe that “there is no likelihood of confusion, mistake, or deception between the continued use and registration of Ohio State OSU Marks and Oklahoma State OSU Marks.”
However, the universities have put a few stipulations in place. Both parties have agreed to never use the other university’s nickname or mascot for merchandise. Additionally, they have both agreed to withhold from disparaging one another with phrases such as: “wannabe OSU” or “copy-cat OSU.”
Despite the USPTO’s rich legacy of refusing the simultaneous protection of marks that will create a likelihood of confusion, in the interest of consumers and businesses; has new precedent been established?
Following the Ohio State and Oklahoma State decision to both hold registrations in “OSU,” I suspect that the USPTO will begin to receive more applicants seeking to register marks, despite a likelihood of confusion, and even more opposition to registration refusals on the basis of a likelihood of confusion -both of which the USPTO will likely be forced to address.
What does this mean for the “likelihood-of-confusion test” that has been adhered to and followed by applicants, lawyers, and the USPTO for decades? Does a difference in “meaning” now hold more weight than similarities in sound and appearances? Can applicants with marks that are similar in sound and appearance and used in connection with similar goods and services be allowed to co-exist if both parties can prove a clear difference in meaning? And what role should the consumer play in this decision? Should a mark’s “meaning” be determined by the assertion of both parties or should the consumer be allowed to weigh in?
Additionally, should trade dress be factored into the “likelihood-of-confusion test” moving forward? Trade dress refers to visual characteristics of a product or its packaging. In this case, when Oklahoma State uses the mark OSU on apparel and headgear, it typically includes the school colors, orange and black. On the other hand, when Ohio State uses the mark OSU, it includes their school colors, scarlet and gray. Thus, in determining whether marks create a likelihood of confusion, should similarities, or differences, in trade dress be a determinative factor?
Further, should a mark’s distinctiveness now override its “likelihood of confusion?” A mark is considered to be distinctive when consumers have come to recognize the mark as a source indicator. Thus, if two trademark applicants can establish that both marks have been able to simultaneously acquire distinctiveness despite their similarities and with little confusion among consumers, should this override any USPTO registration refusal based on a likelihood of confusion?
And finally, will this now allow for applicants and registration holders to play a more intricate role in the registration process and determinations? Should the USPTO uphold the agreement reached between Ohio State and Oklahoma State? Should trademark registrants and trademark applicants be able to settle their differences between each other and leave the USPTO out of the equation?
The answer to me is quite simple. Following the “OSU” agreement between Ohio State and Oklahoma State, the USPTO should follow suit and consider factoring trade dress into the “likelihood-of-confusion” test when applied to future trademark applicants. By nature, human-beings are visual people. Colors, movement, and graphics catch our attention. We would rather skim than to read or browse rather than dig. We are busy people with things to do. Thus, we appreciate efficiency. Therefore, when reaching for a bag of M&M’s or Skittles candy, I am not necessarily looking for the word itself, but rather for a yellow or red bag respectively. Or, when I’m searching for Aunt Jemima syrup, I am not as much looking for “Aunt Jemima” on the packaging as I am looking for syrup with a red label and the face of an African American woman imprinted on it. While, this one factor may not in itself be a determinative factor, I do believe that the USPTO should highly consider factoring trade dress into the analysis.
Additionally, if two similar marks have been able to simultaneously acquire distinctiveness while providing the same goods and/or services in the same market, then they should absolutely be able to co-exist with shared rights in the mark- even though they would likely fail the “likelihood-of-confusion test” as is applied today. Trademark law was partially derived from a need to protect consumers from confusion, deception, and harm. However, if it can be successfully established that two marks have indeed been co-existing for a certain period of time without any confusion, deception, or harm amongst consumers – then a “likelihood-of-confusion test,” alone, should not be able to deprive them from their joint rights in the mark. However, I believe that this approach would require nothing less than clear and convincing evidence to effectuate such joint rights.
Finally, while the ability to resolve conflict outside of the courts is a concept long supported and endorsed by the American legal system; when it comes to protecting the interest of consumers, handling trademark matters in this manner may not necessarily be a practice that the USPTO should endorse. In these conversations, we have two businesses present, but who is there to support the consumer’s interests? While both parties fight for their rights, who will fight for the rights of consumers? Thus, potentially leaving consumers at risk for the very things that trademark law was enacted to prevent.