First of all, this is not correct. Boise State has a design trademark registration for “the color blue used on the artificial turf in the stadium” (U.S. trademark registration No. 3707623).
Why can they do this? Because it’s distinctive. Before they started doing this, no one else was coloring their stadium turf blue. And they did it in a way that constituted a source indicator. They presented it to the public with the message “when you see a blue playing field, you know you’re watching a Boise State sporting event!” (perhaps not exactly in those words).
They kept doing it to the extent that it became distinctive, and the public grew to learn that if they saw a blue field, that it was a Boise State event. That’s how any trademark comes into being.
That’s how “International Business Machines” became a trademark. It’s a simple noun phrase, which has a literal meaning, but because a company used it in commerce, they could show that it had become distinctive in the minds of the public.
And the part about “so if any other stadium wants to put in turf of any color but green they have to pay BSU.”
This is tricky. If Boise State willy-nilly issues licenses to let other stadiums use blue turf (note blue, not “any color but green”), then they risk losing their trademark through “naked licensing.” They have to be careful that the public doesn’t lose the notion that blue turf is an indicator for a specific source of goods and services. There has to be some connection with the licensee and the source. Boise State has to exercise some kind of quality control such that when the public sees blue turf they think “Oh, this is going to have certain qualities or characteristics because the blue turf means X.”
Hilariously, a university spokesman is insisting that the trademark application is to support “our core academic mission of teaching and research”. :dubious:
If they’re really trying to protect a potential line of clothing with just the word “The” on the front in big letters, they’re going to dial up the scorn and laughter directed at the school to 11. Maybe that’s the whole point - school leaders fear that other university sports programs are overshadowing O.S.U. as the most hated in the country. Can’t let Notre Dame or Alabama get the advantage.
Originally I thought that “The Ohio State University” silliness was connected to a deep-seated fear that otherwise, people would confuse the school with Ohio University down in Athens, which might also account for the schools not playing each other in major sports.
Or there’s another pathology involved that I don’t understand.
Times Higher Education magazine doesn’t produce clothing, as far as I know, but they do very prominently use THE as branding, have been doing so for at least a decade, and have an international presence. Would that be enough to disrupt the university’s use of the word as a trademark?
Particularly as clothing isn’t either of their core business, and ‘putting your logo on a shirt’ is a very common commercial enterprise that many many companies do, who don’t have clothing as their core business
Maybe. Someone would have to make the case that “THE” as used by Times Higher Education or someone else is established as a trademark that this would create confusion over or that this and other uses of “the” on the front of shirts are already known as a common ornamental feature among the relevant consuming public. Because this is the U.S. Patent and Trademark Office, the relevant consuming public is the United States.
In cases like this, it shouldn’t take much, because, as I said before, ornamental uses on the front of shirts and caps is usually a pretty hard sell, or should be anyway.
But it’s probably not a killer if Times Higher Education isn’t in the scope of the business that Ohio State is in, one way or another.
And, as I said, trademarks need not be unique. Just because Times Higher Education uses “THE” as a trademark doesn’t mean that Ohio State can’t have trademark rights in “The.”
The “core business” thing is a red herring. It doesn’t matter if it’s your core business. The question always comes down to is it a use in commerce of a distinctive indicator of the source of goods or services that doesn’t create confusion with someone else’s trademark.
Ohio State can be in the business of selling clothing (obviously, they’re going to contract out the actual manufacture). It doesn’t matter that it isn’t the university’s core business.
Put it this way: If you saw that shirt, with a gray THE on a red background, without the context you learned from this thread, would you be able to guess what it was referring to? There’s a decent chance you would, especially if you’re the sort of person who follows colleges. Which means that that particular shirt design can be emblematic of the school in Columbus, which means that it can be a trademark.
On the other hand, you might likewise recognize the source of a shirt that had that color scheme, but no particular words or symbols on it at all. And you probably wouldn’t recognize a shirt that had the same word, but in a different color scheme. So I think the argument for the word THE, specifically, as a trademark is weak.
Trademark owners always confidently overstate the scope of their rights. Ultimately it takes someone willing to fight them in court for it to be settled as a matter of law.
I didn’t catch an expanded trademark registration but maybe it’s there.
In any case what they’ve managed to accomplish for the time being is to avoid any definitive adjudication by the courts as to what trademark law actually allows.
It’s not a letter. It’s a logo. They don’t have control over the letter “D.” It’s one or two specific renderings of the letter D as used in connection with their baseball or sporting events business.
That doesn’t mean no one can ever use a “D” again. In practical terms it means that another sports club can’t use that specific “D” as a logo to the extent that the Tigers can say that they are competing in the same marketplace. It’s not like they are making it impossible for other “D” named businesses to have a logo.
And pretty much every other baseball team has a trademark comprised of one or two letters rendered in a particular way.
Facebook has an F. Amazon has an A. Those aren’t remarkable.
If you saw a baseball cap with the Dodgers version of the “D” on it, would you ever think that wasn’t a Dodgers hat? You wouldn’t, and I wouldn’t, and neither would anyone else familiar with the MLB. That is exactly why trademarks exist. If Joe Schmoe sells a hat with that D on it, people will buy it thinking it’s a Dodgers hat, without the team getting a dime, even though the team’s marketing and popularity was directly responsible for that sale. Some business could use that D on a logo and give the mistaken impression that the Dodgers endorse the product or are otherwise affiliated with it. They have an absolute right to trademark that D so that others can’t mooch off of it.
I never realized just how far THE issue had gotten. If they think that their use of the word “The” is distinctive, they are basically admitting to being obnoxious pricks.
Apple Inc has had some issues with its trademark. Because there was a previous well-known use of Apple as a trademark; Apple Records, the Beatles record company.
Apple Records sued Apple Computer in 1978. Apple Computer paid a settlement and there was an agreement that Apple Computer would stay out of music. In 1986, a new Apple computer had music making capabilities so Apple Records sued again and won a new settlement. In 1991, Apple Computer included some music files on a new computer so once again Apple Records sued and collected. Then in 2003, Apple Computer started up iTunes, prompting a fourth Apples Record lawsuit but this time they lost. However, they appealed the decision and Apple Computer finally decided to buy the trademark rights from Apple Records.
That letter on a dark blue baseball cap has been part of Detroit’s uniform since 1901, the year they were founded. Old pictures of Ty Cobb have the same symbol as that of Alan Trammell and Miguel Cabrera. When you watched Magnum, P.I. and you saw Tom Selleck wearing that hat, did you have any doubt what his favorite team was?
That’s why they were able to do that. It is as distinctive an indicator of the team as the NY mark is for the Yankees. If you were given a test of team logos you would instantaneously know which team each logo denoted. That’s why they were able to trademark its use.
That said, they’re not overzealous about it. A town near me uses it as the symbol of their local youth baseball organization and nobody cares because they’re not trying to make money from it. Contrast that with Little League, who would sue them immediately if they used that term instead of “youth baseball” to describe themselves in order to protect their trademark and keep it from becoming genericized.
This story tells you at least two things relevant to this thread – (1) an ordinary word can become a trademark, and (2) two companies can have an identical trademark
Except that Facebook “invented” their F and Amazon created their version of the A. The Tigers, even though they have been around a good while, did not create the Old English D.
mmm
First of all, no, they didn’t invent anything. They’re just slight variations on common letterforms. That minor change doesn’t count for anything you can call “inventions” of new things.
To that extent the Detroit Tigers D is rendered in a particular way that’s just specific enough to be different from other renderings. You’re classifying it as an old English D but there is an infinite number of ways to render Old English D.
Second, so what? There’s nothing in trademark law that requires a trademark to be new or original or invented by you. Most trademarks are just words and combinations of common alphanumeric characters. Nobody’s required to be inventing anything. For Pete’s sake, some huge proportion of trademarks are just someone’s name.
What matters is that it’s a distinctive source indicator for the relevant market segment. And I don’t think you. An argue that it’s not true for the Detroit D.
The Boise State thing is different in my view. I don’t see how “not green” can be a source indicator, especially if they’re licensing it to everyone. But until someone determines to pony up for a lawsuit against them we won’t kniw.
