Ben Feiner
In recent months, sports-related trademark applications on both sides of the Atlantic have produced a flood of sardonic criticism. In England, an effort by the soccer club Liverpool FC to trademark the word “Liverpool” was shot down by the government’s Intellectual Property Office due to the obvious “geographical significance” of the word, following criticism of the application by the city’s mayor and the team’s own fans.[1] In an even more absurd application, The Ohio State University attempted, and failed, to trademark the word “THE” (i.e. the article in its official name). In response, the rival University of Michigan jokingly suggested trademarking “of” and Ohio University pointed out their own position as “THE first university in the state of Ohio.”[2]
While Peter Moore, the CEO of Liverpool acknowledged that the club “underestimated the reaction” to its application,[3] Ohio State is no stranger to trademark controversy. In fact, the school attempted to trademark the initials OSU just two years ago.[4] At that time, it was noted that there were two other schools with major athletic programs with the same initials (Oklahoma State University and Oregon State University). Similarly, in the present case, there are others with claims to the word “the” even in the small world of college athletics. For instance, the University of Miami is commonly referred to as “The U.” Despite this similarity, there was perhaps some reason for hope — after all, the Chicago Cubs baseball team had successfully trademarked “W” (the letter adorned on a flag flown after Cubs victories), and Texas A&M University trademarked the phrase “12th man” in 1990.[5]
While these applications appear frivolous at face value, both Liverpool and Ohio State had valid reasons for attempting to create these trademarks. Ohio State has a long, widely-mocked history of emphasizing the word “the” in its title. Ed Jennings, the university’s president during the 1980s, claims credit for popularizing the emphasis on the word.[6]And in the sports world, it is so common for former Ohio State athletes to highlight the article in discussing their school that the practice was mocked during an episode of the satirical Comedy Central show, Key & Peele. “THE” has also been featured prominently on a range of Ohio State’s apparel, including hats, T-shirts, and sweatshirts, bringing in roughly $50,000 of revenue to the school.[7] Apparently, the school only decided to pursue the trademark now out of fear that the word could be stolen from them. Rick Van Brimmer, Ohio State’s Assistant Vice President for Trademark Licensing Services, stated that the trademark application was a response to an attempt by fashion designer Marc Jacobs to trademark the word himself.[8]
Similarly, Liverpool argued that their trademark application for the word “Liverpool” was a reaction to an uptick in the production and sale of inauthentic products bearing that word in wake of their European championship.[9] The company additionally promised that if the trademark was granted, it would use all revenue from products bearing the term to reinvest in players and its stadium.[10]
The most obvious lesson stemming from the pair of cases is that companies in the public eye need to carefully consider the public relations ramifications of their decisions to pursue intellectual property protections. This is especially true in protecting words or phrases that seem more generic to the average fan, and thus more controversial. However, these cases also demonstrate the extraordinary power these types of applications have in terms of creating free advertising. Perhaps, in the long term, some companies may actually benefit from the brand recognition that comes with this type of story more than they are harmed by the corresponding ridicule.
[1] Sachin Nakrani, Liverpool FC Fail in Move to Trademark the Word ‘Liverpool’, Guardian (Sep. 26, 2019), https://www.theguardian.com/football/2019/sep/26/liverpool-fail-in-attempt-to-trademark-the-word-liverpool-football.
[2] Claudia Harmata, Ohio State University is Trying to Trademark the Word ‘The’ — and Other Colleges Have Thoughts, People (Aug. 15, 2019), https://people.com/sports/ohio-state-trademark-word-the/.
[3] See Nakrani, supra note 1.
[4] Sophie Edbrooke, Is it Really The Ohio State University, Am. Univ. Intel. Prop. Brief (Nov. 7, 2019), http://www.ipbrief.net/2019/11/07/is-it-really-the-ohio-state-university/.
[5] Mark Williams, Ohio State and the Fight to Trademark the Word ‘THE’, Columbus Dispatch (Oct. 12, 2019), https://www.dispatch.com/business/20191012/ohio-state-and-fight-to-trademark-word-the.
[6] Id.
[7] Id.
[8] Id.
[9] See Nakrani, supra note 1.
[10] Id.