OSU, LeBron Dealt Blows in Efforts to Register Trademarks

The U.S. Patent and Trademark Office (USPTO) dealt two blows to Ohio sports figures last week. Both The Ohio State University and LeBron James’s efforts to register trademarks were initially rejected by the USPTO.

In the first case, The Ohio State University is seeking to trademark the term “THE”, which it is currently using on t-shirts, baseball caps, and hats. The USPTO examining attorney issued an Office Action finding that “THE” does not indicate its source and serves merely as a decoration.

“Registration is refused because the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.”

In the second instance, LeBron James, through LBJ Trademarks, LLC, is attempting to protect the term “TACO TUESDAY” for his future use on websites, downloadable audio and visual works, podcasting, and other uses. (James has previously shared videos online using the phrase.)

The Office Action issued by this examining attorney finds that “TACO TUESDAY” simply conveys a well-known and commonplace message - and thus is not distinctive.

“Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others.. . . In this case, the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.”

It is important to note that in both cases, the applications have not yet been ultimately rejected. The Ohio State University and LBJ Trademarks, LLC, have 6 months to respond to the respective Office Actions with legal arguments for why the marks should be permitted to register.

As is clear from these two cases, trademark applications can be rejected for a variety of reasons. For assistance with your mark, contact our office today.