10/13/98
Contact: John F. Burns, Ohio University Director of legal
affairs: (740) 593-2626 before 5 p.m.; (740) 593-2733 5-6:45
p.m.;(740) 593-6576 after 9 p.m.
During the past few months, we at Ohio University have engaged in settlement discussions with Ohio State University to try to stop Ohio State's legal effort to cancel our federal trademark registration of our historic name of "OHIO" and prevent us from obtaining a federal trademark for our "Attack Cat" logo that uses the designation of "OHIO."
The result of these negotiations was that Ohio State University's vice president for legal affairs ultimately said in an Aug. 20, 1998, letter: "I will be as clear as I can. We envision continued use of Ohio for apparel, merchandise, materials and entertainment consistent with more than 100 years of documented and demonstrated use."
Actually, investigation so far indicates that the 100 years of first and consistent use of "OHIO" applies only to Ohio University. The first printed record discovered thus far was in 1899. Ohio State University's use of "OHIO" has been sporadic, but evidently occurred later than Ohio University's.
The fact that Ohio State University wants to be known both as "OHIO STATE" as well as "OHIO" has put Ohio University in the position that it must and will defend its historic name and federal trademark "OHIO" as Ohio State University pursues legal efforts to cancel our trademark.
To the extent that Ohio State University's legal challenge would blur our distinctive identities is a disservice to students, alumni, faculty and staff of both fine institutions.
This matter is really a reflection of Ohio State University's ego over economics, as they do not license "OHIO." It is very unfortunate Ohio State University wants to use for its own purposes its federally trademarked name "OHIO STATE" as well as Ohio University's federally trademarked name "OHIO." This is inappropriate legally as well as an extraordinary exception to collegial relationships between state universities nationwide (e.g. "Michigan State" and "Michigan"); and Ohio University now has no choice but to vigorously defend its historic name and trademark "OHIO."
While the point has sometimes been obscured in statements from Ohio State University, Ohio University holds the "OHIO" trademark in the same way that Ohio State University holds a trademark for "OHIO STATE, " "OSU" and "Buckeyes." As Ohio State University well knows, trademarks of state names by state universities are concerned only with secondary meanings, typically for team names and licensing. Certainly, Ohio State University does not control every use of the term "Buckeyes."
Ohio University applied for its key trademark "OHIO" in 1993, and it was registered to the university by the U.S. Patent and Trademark Office on May 9, 1995. Ohio State University filed a complaint with the trademark office on Dec. 16, 1997, to cancel Ohio University's federal trademark and prevent it from registering its "Attack Cat" logo.
Not unlike most universities, including our neighboring universities "Michigan State," "Michigan," "Indiana State" and "Indiana," Ohio University wishes to protect its logical and historical shorthand name. As Ohio's first university, Ohio University was founded in 1804. Ohio State University was founded in 1870 as Ohio Agricultural and Mechanical College and adopted its current name in 1878.
Defense of our trademark thus far has cost Ohio University approximately $25,000. Ultimately, unless Ohio State University drops its legal challenge, the defense may cost Ohio University more than $150,000. In addition to preventing a blurring of our respective identities, there are sound financial reasons to protect our trademark: Revenue for Ohio University from trademark sales was approximately $170,000 last year, much of the sales being "OHIO" merchandise.
Ohio University had proposed to Ohio State University that a clear and binding legal agreement be reached denoting that Ohio State University's historical uses of "OHIO" were quite appropriate, but that its athletic team uniforms, cheerleading uniforms, and licensed apparel and merchandise should not use Ohio University's trademark of "OHIO." We received a rejection and a counterproposal that they would agree not to use "OHIO" in green and white, Ohio University's colors. Ohio University has also earlier explained to Ohio State University that it would not be appropriate to have the Ohio Secretary of State's office or a new corporation own and license the "OHIO" trademark.
We do recognize and do not dispute Ohio State University's historic uses of "OHIO," such as "Ohio Stadium" and "Script Ohio," but it is clear from the review of the local, state and national media, as well as from recognition of other Ohio University programs, that Ohio University is known as "OHIO" and Ohio State University is known as "OHIO STATE."
I will make available on request a few of the many written and pictorial records from 1899 to 1998 that reflect the news media's recognition, as well as other public recognition, of Ohio University's historic name of "OHIO." In our judgment there is a very clear public awareness from those who are familiar with the two state universities that Ohio University has been known as "OHIO" and Ohio State University as "OHIO STATE" for the past 50 years, as a generation has grown up with television and other media focus on intercollegiate athletics and other programs of each school.
At this point, the discovery process -- each side examining the records and artifacts of the other -- is proceeding in the litigation and the Trademark Trial and Appeal Board has not yet set a date for resolution of the matter. I would expect a resolution by late spring or early summer.
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