As Steve blogged earlier this week, we’ve had a lot of “zero” on the mind lately—marks related to the word and numeral. It got me thinking about the letter ‘O,’ especially since it has been in recent trademark news.

If you missed it, The Ohio State University and Oklahoma State University are now dueling it out at the USPTO over Oklahoma’s trademark application related to the block ‘O.’ Specifically, Oklahoma is attempting to register a mark of “a drum major marching while leaning back with head tilted back”:

According to Oklahoma, it has been using the singular block ‘O’ since 2001, most notably on the jersey of its band’s drum major (but also on sports memorabelia):

But in an opposition to the mark, Ohio says it has been using the same letter since as early as 1898, and it’s current main athletics logo includes the block ‘O’ in the background:

According to Ohio, Oklahoma’s use of the leaning and tilted ‘O’ is likely to cause confusion. I wonder if any other O-state institutions will weigh in—looking at you, Oregon.

On the one hand, the block styling of the Oklahoma ‘O’ could cause consumers to accidentally purchase sports gear from the wrong institution. On the other hand, the letter ‘O’ is such a fundamental unit of the English language that it’s hard to argue just one institution should be entitled to its exclusive use—even if it’s only in the college sports context. And Oklahoma is only seeking registration of a mark which uses ‘O’ in a minor fashion. However, Oklahoma’s marching ‘O’ mark could run into issues related to the requirement that the mark be used in commerce. After all, it’s a mark representing the band major, who wears an ‘O.’ How does Oklahoma otherwise use the mark or plan to use it commerce?

It turns out that the letter ‘O’ is not widely used as a mark on its own. There are some recognizable uses, though. Perhaps the most distinctive use of the letter ‘O’ is the Oprah Magazine:

In 2001, a German magazine also named ‘O’ sued Oprah’s ‘O’ magazine, but the suit appears to have gone nowhere, and Oprah’s ‘O’ lives on.

The only other major ‘O’ competitor appears to be Cirque du Soleil:

Maybe there’s some potential for confusion between the Oklahoma drum major and the high-flying circus performers. Though, I’m guessing the audiences for both don’t substantially overlap.

I think the few recognizable instances of ‘O’ marks can be explained by the overall minor distinctiveness a single letter can generate when used in connection with a brand. This is the up-hill battle both Ohio and Oklahoma will face in arguing their sides of the trademark dispute. Stronger letter marks are paired with other words, such as O Magazine and O Cirque du Soleil. Another example comes to mind: Toys ‘R Us (also in the news lately).

– Draeke Weseman, Weseman Law Office, PLLC

On Monday, the University of Oregon and The Ohio State University will play in college football’s first College Football Playoff championship game. DuetsBlog has previously covered the trademark issues surrounding BCS Properties’ attempt to register College Football Playoff as a trademark in connection with college football playoff games here. Even if College Football Playoff ultimately fails as a trademark, Monday’s championship game will be awash in trademarks and intellectual property. Consider this your DuetsBlog guide to the game.

UNIVERSITY OF OREGON

We’ll start with Oregon, and begin with a little history. In 1859, Congress required Oregon to set aside land for a state university as a condition for admittance into the Union. Oregon chose land in Eugene, and, in the mid-1870s, began building what is today the University of Oregon®, or Oregon®, or just UO®. Although all eyes will be on the Oregon Ducks’® football team on Monday night, Eugene may be better known to many as Track Town USA® thanks to the success of Oregon’s track team under Bill Bowerman in the 1960s and 70s. During that time Bill Bowerman introduced jogging to the American public, coached the legend Steve Prefontaine, met Phil Knight, and started Nike, Inc.

Nike has maintained a strong relationship with Oregon ever since, hiring grad Tinker Hatfield in the 80s to design Air Jordan shoes (but not the ones blogged about here) and grad Dan Weiden’s agency Weiden-Kennedy, to coin the tag line “Just Do It” while developing TV ads like “Bo Knows” to sell newly invented cross-training shoes (also designed by Tinker Hatfield.) Today, Nike designs not only Oregon’s football uniforms, but also the special uniforms for all four teams that played in the College Football Playoffs, branding them from head to toe, and even hands:

For those interested, these uniform deals are influential, lucrative, and signed on a team-by-team basis.

Continue Reading Topics of Conversation for Your College Football Playoff Party

  v.     

Texas Toast is the generic name for a type of bread, you know, the big thick double-cut slices. Anyone can call their bread Texas Toast if that is what they are selling, and, by the way, it doesn’t have to be toasted for the name to fit.

But, what if you’re selling a product made from bread, say, croutons? Can Texas Toast be owned and registered as a trademark for croutons? What if they are big, thick croutons, with a "Texas Toast" cut? And, if you market your croutons as "New York " brand, "The Original Texas Toast" croutons, does that not imply, if not admit, that others are free to compete by selling their own brand of, perhaps, non-original "Texas Toast" croutons? What if you didn’t start using a TM designation until after you noticed your competition selling Texas Toast croutons? Interesting questions, no doubt.

Well, ten days ago, a federal district judge in Ohio denied cross-motions for summary judgment in a trademark infringement case over an Ohio company’s claimed common law unregistered rights in "Texas Toast" for croutons and a Grand Rapids, Michigan company’s claimed descriptive fair use of "Texas Toast" also in connection with croutons. As an aside, having spent two years in school there, when I think of Grand Rapids, Michigan, and bread, sorry, all that comes to mind for me, are the wonderfully and perfectly steamed hot dog buns at the world famous Yesterdog.

In any event, back to Texas Toast, here is a pdf of the decision in T. Marzetti Co. v. Roskam Baking Co. , indicating that it is too early to decide the Texas Toast trademark infringement case because there are several disputed issues of fact, including, among others, the meaning and the term’s placement on the all-important Spectrum of Distinctiveness, i.e., whether "Texas Toast" is generic, descriptive, or suggestive for croutons.

Now, since the case wasn’t cut short and decided on summary judgment with a limited record, we’ll have to wait and see how the evidence shapes up and whose claim ends up being, eh, toasted, but  I’ll have to say, at this point, "Texas Toast" sounds to me like a category of croutons — those cut from texas toast style bread; like Lite and Light is to beer, and Brick Oven is to pizza — each are generic terms that are not own-able for those goods, because they designate a category of goods, not the origin or source of the goods. By the way, it doesn’t matter if you’re the first to use a generic term, if found generic, it is available for use by all, even direct competitors.

So, this is probably one of those trademark cases where who wins will come down to the proper placement of the claimed mark on the Spectrum of Distinctiveness. If generic, case over, defendant wins. If suggestive, plaintiff acquired rights based on its first use, two years prior to defendant’s use, and will likely win, provided a likelihood of confusion can be shown. If descriptive, plaintiff will be in the difficult position of proving that it acquired distinctiveness in "Texas Toast" prior to defendant’s first use, so within a short two-year period of time. If so, good luck with that.

No doubt, when it comes time for trial (or perhaps another summary judgment motion prior to trial), the plaintiff will make the most of the fact that the Trademark Office did not issue a descriptiveness or a genericness refusal on TEXAS TOAST for croutons, see the USPTO details here. Seems like an oversight to me, at least with respect to descriptiveness, after all, the plaintiff has the number one selling brand of texas toast style garlic bread, and it now has expanded that use into the field of croutons.

Ironically, to put its TEXAS TOAST trademark application in condition for publication by the U.S. Trademark Office Marzetti had to argue, and did so successfully, that it wasn’t likely to be confused with the prior federally-registered TEXTOAST trademark for bakery products. In doing so, it narrowed its description of goods from "croutons" to "croutons sold in a salad toppings section of grocery stores and supermarkets." Given that Marzetti’s mark will now be published for opposition, it is probably safe to assume that Roskam Baking will now oppose registration of Marzetti’s claimed TEXAS TOAST mark for croutons, so it doesn’t become registered prior to trial, but we’ll see.

So, what do you think about the critical Spectrum of Distinctiveness questions?

  1. Is Texas Toast generic for a category of croutons made from texas toast style cuts of bread?
  2. Is Texas Toast merely descriptive of croutons because it immediately describes a feature, characteristic, or attribute of croutons? or
  3. Is Texas Toast suggestive of croutons, because, a consumer’s imagination is required to understand the connection between the mark and the goods, or as plaintiff argues, "everything is bigger in Texas."  

Is plaintiff Marzetti’s suggestiveness argument all hat and no cattle?

Now, vote again, after reading plaintiff’s own description of its croutons below the jump.

Continue Reading Texas Toasted? How to Slice the Trademark Spectrum of Distinctiveness