Legal Geek No. 184: "The" Ohio State Applies for a Controversial Trademark

Hi, and welcome back to Legal Geek.  This week, we cover an interesting bit of trademark news stemming from the alma mater of your truly, as The Ohio State University applies for a federal trademark on the word "the."

https://archive.org/details/legalgeekep184 

Based on a declaration by the State of Ohio about 100 years ago, the formal name of the university in Columbus home to Buckeyes is The Ohio State University. This has been marketed heavily by the university over the past 20-25 years and is something of a point of pride for the students, alumni, and university personnel.  While that in and of itself is pretty silly, this branding push has now extended to a controversial trademark application filed 2 weeks ago by OSU.

The application seeks to cover the word mark "The" in association with apparel.  This would cover any use of that word on apparel as a source identifier, as the application is not limited to just apparel associated with the university or its colors, nor is the application limited to a particular logo or graphic version of "The."  As the definite article "The" is the most commonly-used word in the English language, this application for trademark has been lampooned by many news outlets and legal scholars.  But does this application have a chance to succeed?

The short answer is: probably not.  That being said, this application is not as much of an overreach as some have played it to be, even coming from one of the most litigious university branding departments in the country.

The application will need to overcome some hurdles in examination before becoming an enforceable trademark registration.  First, the university may have to distinguish from the many prior trademarks in apparel that use "The" as part of the mark.  If any such prior mark is confusingly similar, OSU's registration may be blocked.  Even if such a challenge is not made by the Trademark Office Examiner, third parties can oppose this application if it gets initially allowed to protect their own rights in the word "The."  Oppositions can be difficult to overcome and are expensive, since they are basically mini litigations over who properly owns exclusive rights to a brand or mark.

Another hurdle is that OSU has only shown use on the front of a T-shirt as evidence in their application, but this is ornamental use rather than use as a brand.  OSU can likely overcome this issue by supplying new specimens showing "The" in use on tags and the like, but it's a sloppy mistake on the initial record of the application file that will need to be addressed.

Finally, trademarks cannot cover so-called generic and merely descriptive terms, as trademarks cannot be used to lock up words needed for others to fairly describe their goods and services.  With this word "The" being so common, it is unclear whether such a word mark can be distinctive enough to serve as a trademark in the consumer's mind.  If there's any chance of such a word overcoming this requirement, however, OSU and this long-term marketing of The associated with the university probably can provide proof of secondary meaning associating the term with the university as the source of goods.  But even then, the strength of such marks is inherently limited.

Again, this is not as big an overreach as the media is playing it out to be, as even a registered trademark would not allow OSU to block descriptive uses of this term in the apparel field that are not leading to consumer confusion.  It would be an uphill battle to challenge any competing use, which means the trademark is pragmatically of little commercial value other than as a potential deterrent.

The Bottom Line is: alumni of The Ohio State University will continue to be proud of our little definite article, but that and the associated branding efforts of the university will probably not result in a federal trademark registration on just this word "The."  A more narrowly tailored application may come in the future which will have a better chance of success, but for now, OSU is just going to have to keep taking all the PR hits brought on by such a bold legal filing strategy.  And I'd be remiss to end this segment without a quick Go Bucks for the upcoming college football season.

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Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy

Legal Geek No. 183: Spellchecking Patent allegedly infringed by Apple

Hi, and welcome back to Legal Geek.  This week, we cover a newly-filed patent lawsuit against Apple regarding aspects of automatic spellchecking. 

https://archive.org/details/legalgeekep183 

It seems like almost as long as we've had computer word processing software, we've had spellchecking capability.  As such, you may be surprised to learn that one of the most typical features of spellchecking is still potentially covered by two U.S. Patents, specifically the functionality of identifying spelling errors and potential corrections automatically for a user, which is done on Apple devices with the so-called Red Squiggly line underneath such errors.  Apple was sued by a company called Sentius International on these two patents this week.

The history of this case is actually pretty typical for patent disputes.  Apple previously partnered with Sentius to help develop a precursor to the modern version of the Red Squiggly line spellchecking functionality.  Thus, Apple and Sentius likely had a prior business agreement that sent some royalties or other money to Sentius for this assistance.

However, at some point Apple had further developed their software and functionality to an extent where it was believed Sentius no longer had to be paid for their contribution to the original version of the functionality.  When Apple stopped paying Sentius in about 2015, that was the first step that led to the lawsuit eventually filed against Apple.  Sentius has likely spent much of the past 4 years negotiating with Apple to try and re-negotiate terms of a license of their patented technology, but Apple refused to enter such a new agreement. 

That brings us to this week, where Sentius filed this lawsuit alleging that Apple's Red Squiggly line spellcheck infringes two of its patents.  Looking over the claims in these patents, the claims in one of the patents are worded broadly to cover linking of a remote database with several computers and reviewing terms in a document to associate data stored in the remote database with the term and then provide that information to the computer.  The other patent has been reissued with more specific claims covering systems for breaking down a text document into discrete pieces and using an external reference material to evaluate those discrete pieces. Both patents are expired or expiring soon, so the primary point of Sentius is to secure damages for the past infringements.

Such patent cases can lead to big damage awards when dealing with very commercially-successful defendants like Apple, so the leverage Sentius has here is to negotiate a favorable deal to gain some royalties or cash flow from Apple to perhaps settle this lawsuit.  If the lawsuit proceeds, I expect these patents to be challenged for invalidity, as broader functionality software patents are most ripe under current rules for validity attacks.  It's hard to determine at this early stage who has the upper hand, but we will continue to monitor the case in the event that spellcheck, of all things, becomes a very expensive infringement for Apple in this case.

The Bottom Line is: although patents only last for 20 years in most countries, sometimes companies like Apple can be surprised by how technology that seems like it's been around forever like automatic spellcheck can be covered by still-pending, older patents near the end of term. As many of us have been burned by mistakes made by the allegedly smart spellcheck and autocorrect options on our smart devices, seeing Apple be pursued for patent infringement on such technology is perhaps an ironic, enjoyable twist of fate in the tech legal landscape.  In any event, don't expect the infamous red squiggly to go away though, as even if covered by these patents, they are expired or expiring soon.

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Do you have a question? Send it in!

Thanks for reading. Please provide feedback and legal-themed questions as segment suggestions to me on Twitter @BuckeyeFitzy