2/17/98

ATHENS, Ohio -- Ohio University filed a response today to Ohio State University's complaint to the U.S. Patent and Trademark Office to cancel Ohio University's federal trademark of its historical shorthand name, "Ohio," which it has used for more than 100 years.

"There is a simple principle here. We want to be able to sell Ohio' sweatshirts and caps and to have our athletic teams recognized as Ohio'--that's our name!", said Ohio University President Robert Glidden. "Ohio State filed a legal challenge against our trademark and then issued a press release claiming it was saving Ohio' for Ohioans. That is a nonsense statement -- of course Ohioans own Ohio.' I would point out that everyone has a right to use the term Buckeyes,' but Ohio State University holds a trademark for that term. Trademarks are concerned only with secondary meaning of a word. For both Ohio' and Buckeyes,' the trademarks held by our universities apply only to athletic events and apparel."

Ohio University was chartered in 1804 and Ohio State University was created in 1870 as Ohio Agricultural and Mechanical College, changing to its current name in 1878. But registering trademarks is a more recent practice in higher education and is used by most universities as a way to produce revenue, protect uses of their name, and project their institutions in the marketplace.

Ohio State registered a variety of trademarks, including its primary trademark, "Ohio State," and "Buckeyes" and variations of the letter "O" in the mid-1980s. Ohio University registered a smaller number of its trademarks in the early 1990s, including "Bobcats" and its primary trademark, "Ohio."

In November, Ohio University offered Ohio State University a written agreement that recognized the Columbus school's use of "Ohio" for various historical purposes, such as Ohio Stadium and the "Script Ohio" marching band formation. Ohio State rejected the offer, and instead filed to cancel Ohio University's trademark in December.

John F. Burns, Ohio University director of legal affairs, says it is curious that Ohio State University wants to deny its older sister institution the same trademark protection it enjoys.

Burns said that both universities will now begin a discovery process, and within 18 to 30 months the issue is expected to be brought before the federal Trademark Trial and Appeal Board.

"Ohio State University can achieve its historical uses of Ohio' by agreement," Burns said. "It is a shame they have burdened us both with the significant expense of their legal challenge."

* We deny "Ohio" is confusing with "Ohio State," and we assert that it is distinctive in the uses we have trademarked to Ohio University.

* The first public use discovered thus far of "Ohio" relating to Ohio University is 1876 -- two years before Ohio State University received that name.

* At the turn of century there are references in state newspapers to "Ohio" playing "Ohio State" in athletic competition.

* We have references in the New York Times to "Ohio" playing the NIT finals in 1941 in New York City.