chevron-down Created with Sketch Beta.
October 04, 2023 Feature

How Firm Thy Branding . . . OHIO

Rachel Smoot

©2023. Published in Landslide, Vol. 16, No. 1, September/October 2023, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Growing up in Columbus, Ohio, before 2000, there were really only two “professional” sports teams that many can recall: the Columbus Crew and The Ohio State University (OSU) football team. Yes, the latter is not in reality a true professional sports team, but for those growing up in Columbus (or really in Ohio), it’s easy to understand the joke. Even now, OSU athletics, and the university itself, have an almost cult-like hold over alumni, current students, future prospects, and even regular residents.

Between September and January, you’ll find OSU flags flying from porches, in many cases in lieu of the American flag. New babies often receive either a toddler OSU jersey or a cheerleading outfit. License plates may be framed with an Ohio State Buckeyes bracket or include the signature scarlet block “O” on the plate itself. The point is that if you live in Ohio, you’re more likely than not to have some piece of OSU licensed product at your residence or in your workplace.

With over 100 registered marks in its U.S. portfolio alone, OSU has deliberately developed its branding and branded merchandise and sought trademark registrations in connection with various goods and services, including but not limited to apparel, home goods, furniture, and appliances. More recently, it appears that OSU has gone beyond the traditional scarlet and gray and sought trademark registrations as to marks that may not traditionally have been connected with the university but have acquired secondary meaning, particularly among OSU’s masses of alumni. Coupled with OSU’s robust licensing strategy, OSU provides a model case study for collegiate branding, licensing, and enforcement.

This article first addresses OSU’s more “traditional” collegiate marks and then examines OSU’s attempts to register newer marks beyond its original house marks as well as OSU’s current enforcement efforts and a successful licensing story. It then presents considerations for colleges and universities seeking to maintain the value of their brands while also keeping those brands relevant and fresh.

What Are Trademarks?

Rooted in the commerce clause, trademarks are words, phrases, symbols, designs, or other distinctive marks that are used to identify and distinguish the products or services of one company from those of another. Essentially, trademarks are source identifiers, and are protectable at the state and federal level, as well as by common law and by statute. Trademarks can include letters, words, images, shapes, colors, sounds, fragrances, and even flavors.

The federal Trademark Act of 1946, known as the Lanham Act, sets forth legal protections for trademarks, including the ability to register trademarks with the U.S. Patent and Trademark Office (USPTO). It also defines what types of marks are eligible for protection, establishes procedures for enforcing trademark rights, and provides for damages and other remedies for trademark infringement.

Under the Lanham Act, a trademark must be distinctive, meaning it must be unique and able to identify the source of the goods or services it represents. Indeed, distinctiveness is key, as it is indicative of a mark’s strength and what is in fact protectable. Courts recognize a spectrum of distinctiveness, with “arbitrary” and “fanciful” marks representing the strongest marks and “generic” as the weakest (and unprotectable). Between arbitrary/fanciful and generic are marks deemed “descriptive.” Marks that are found to be merely descriptive are not entitled to protection, but if a trademark owner can establish that its mark has “secondary meaning,” that mark is protectable.

“Secondary meaning” is also referred to as “acquired distinctiveness.” “The connection between mark and source is assumed in the case of a suggestive or arbitrary term. Secondary meaning performs the role of establishing that connection . . . in the case of a descriptive term.” In the context of OSU, for example, the term “Ohio State” on its own on a T-shirt is merely a geographic designation and descriptive. However, if used in connection with scarlet and gray on the T-shirt, the term suggests an association with OSU.

While OSU traditionally has focused on its centuries-old house marks, more recently, OSU appears to have started capitalizing on seeking protection for marks with secondary meaning.

Scarlet and Gray and the Rise of “THE” Ohio State University

OSU is more than just “The Ohio State University,” and its diverse trademark portfolio and use speaks to that identity.

Known for its distinctive color scheme, OSU’s selection of scarlet and gray as its official colors dates back to 1878, when three students selected the combination as a “pleasing” one that “had not been adopted by any other college.” While not federally registered, OSU’s color scheme is now synonymous with its brand—permeating merchandise, uniforms for everyone from employees to athletes, and even the campus itself. The colors are also a prominent feature of many OSU traditions, such as the “Scarlet and Gray Game” spring football scrimmage, the “Skull Session” pep rally before home football games, and the “Carmen Ohio” alma mater song.

In addition, OSU owns over 140 U.S. trademark registrations and applications currently pending before the USPTO, including but not limited to THE OHIO STATE UNIVERSITY in connection with “indicating membership in the applicant”; BUCKEYES in connection with electric lamps, jewelry, pens, tote bags, tumblers, cups, and providing college-level programs; THE STEFANIE SPIELMAN FUND FOR BREAST CANCER RESEARCH in connection with “charitable fund raising”; and BUCKEYE NATION in connection with cloth banners and clothing.

Clearly, OSU’s trademark portfolio does not end with its trademark colors, mascot, or name—it has also expanded over the years to include OSU’s philanthropic efforts, campus, and alumni organizations. More recently, OSU appears to have started seeking protection for more descriptive marks that have secondary meaning. Likely the most notable addition to OSU’s portfolio is the mark “THE” in connection with clothing, namely T-shirts, baseball caps, and hats.

Originally rejected by the USPTO examining attorney as “a decorative or ornamental feature of applicant’s clothing [that] does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others,” OSU argued that THE is an indicator of secondary source and sponsorship. In support, OSU submitted a new specimen indicating THE on an interior label of a shirt rather than on the front of a T-shirt. Subsequently, the examining attorney believed this evidence and argument to be sufficient and approved the application for publication. Notably, while this application is limited to clothing, it is not a stretch to believe that this registration is only the beginning for a whole portfolio of marks dedicated to THE based on the breadth of OSU’s current registrations and applications.

OSU’s Enforcement Efforts

In 2013, U.S. consumers spent a reported $4.62 billion on college-licensed merchandise. With millions of dollars at stake, universities everywhere seek broad protection to continue to generate and maintain revenue streams based entirely on the sales of officially licensed merchandise. OSU is no different. As of 2022, the trademark and licensing program alone was earning OSU an average of more than $12.5 million each year. Unsurprisingly, OSU is fiercely protective of its trademarks.

Taking a proactive approach, OSU has established university brand guidelines for third-party use. These guidelines include “foundational elements” for a uniform identity, including “logo usage, unit identification, color palette, and approved university fonts.” Using an online system, current students, faculty, and even third parties may request official university input on branding.

In addition, OSU continues to monitor the Trademark Official Gazette for any marks that could potentially confuse consumers or dilute the strength of OSU’s marks. Since late August 2021, OSU has initiated over two dozen opposition proceedings or indicated its intent to do so. In several instances, OSU has filed notices of cancellation with no responses from applicants, resulting in fairly quick defaults and resolutions. For the vast majority of these other proceedings, OSU appears to have been able to engage the applicant with the problematic mark and reach a settlement.

For example, with respect to its THE mark, while OSU was seeking its own application, it filed an opposition against Marc Jacobs Trademarks, L.L.C., which was seeking its own trademark registration for THE at the time. OSU alleged that it had consistently used THE as a trademark on athletic merchandise since 2005, more than a decade before Marc Jacobs began to use the mark in connection with its offerings. On the same day the opposition was initiated, OSU suspended the proceeding with Marc Jacobs’s consent to enter settlement negotiations. Less than four months later, OSU withdrew its opposition based on a settlement with Marc Jacobs, and each party amended its respective application.

By continuing to exercise its due diligence at minimal cost, OSU maintains a strong brand, insulating its marks and trade dress from any potential dilution and harm to the university’s goodwill.

Homage: A Case Study for a Successful Partnership

In permitting third parties to use its marks, OSU has fostered an environment of entrepreneurship in Ohio. Homage is a case in point.

Started in 2007 by an OSU alumnus, Homage is a homegrown Columbus business specializing in vintage inspired apparel. While not truly affiliated with OSU, Homage is a licensee and credits the OSU license for its growth and opportunities, including licenses with more than two dozen other colleges. Homage’s OSU offerings include shirts spanning decades of history at OSU from the 1960s to the most recent era, ensuring that more viral movements stay relevant.

Homage founder Ryan Vesler, who also grew up in the Columbus metropolitan area, started the business out of his parents’ basement, convincing OSU to grant him a license for selling apparel wholesale. Eventually, Vesler capitalized on his relationship with OSU basketball walk-on Mark Titus to print “Club Tril” T-shirts. At the time, Titus was a student-athlete, so all proceeds went to charity, but that deal led to Homage sponsoring the Nut House (the basketball student section), launching the brand into the mainstream.

Today, Homage operates four brick-and-mortar locations in Ohio and proffers vintage inspired apparel not only from OSU but also from other colleges and pop culture ephemera.

Considerations for Other Colleges and Universities

Taking a page from OSU’s playbook, it would be beneficial for each college and university to establish a strong brand and asset guideline that permits third-party use of marks and trade dress under certain conditions. Collegiate merchandise sales generate billions of dollars each year and are not limited to just licensed material. Not atypically, third parties create and sell merchandise bearing collegiate logos and trade dress, particularly through online commerce. Licensing departments can only do so much to stem the tide of these unlicensed goods, so by providing a place for third parties to seek permission, rather than forgiveness, it is possible to stem the tide of any harmful counterfeits.

Similarly, regularly checking the Trademark Official Gazette to stop the grants of potentially problematic trademark registrations is also a good practice. OSU is not alone in its breadth of goods and services, such that its regular practice of monitoring for potentially conflicting marks is done at minimal cost and minimal effort compared to playing “catch up” in federal enforcement efforts later. A cease and desist letter combined with settlement discussions will, in the grand scheme of things, be less expensive than any formal enforcement action.

Of course, not all third parties take their intentions to the USPTO. In the growing age of social media influencers, licensing departments should take a close look at growing influencers who may benefit from the university’s marks and goodwill. In particular, more companies are using social media to create an impression that they may be official sponsors or partners of schools through giveaways or congratulatory advertising. While these promotions are not illegal, it is not unlikely that consumers may believe there is some real partnership. As a result, it may be beneficial to start developing procedures for limited promotional partnerships, particularly as they pertain to online social media.

While licensing departments should be vigilant, they may also want to take into consideration that their enthusiastic enforcement efforts may come across as bullying. Over the past two decades, licensing departments have come under increased public scrutiny, particularly in their efforts to threaten small businesses. In a well-known example, the University of Alabama sent a cease and desist letter to a local bakery that featured the Alabama script “A” on its baked goods. Following an outpouring of nationwide criticism, Alabama issued an apology and withdrew its demand.

Clearly, colleges and universities walk a fine line of licensing and enforcement, particularly in instances involving small business owners and students. Indeed, the right partnership can benefit all parties, rather than invite public scrutiny. To that end, as university trademark licensing has evolved, universities face a growing challenge that requires a nuanced approach of image consistency balanced with enforcement.

    The material in all ABA publications is copyrighted and may be reprinted by permission only. Request reprint permission here.

    Rachel Smoot

    Taft Stettinius & Hollister LLP

    Rachel Smoot is an associate at Taft Stettinius & Hollister LLP in Columbus and a member of the firm’s intellectual property litigation and commercial litigation groups, specializing in trademark and copyright litigation. She is a proud alumna of The Ohio State University.