This week’s post is for all you college football fans out there, especially those who root for a team that has some lame nut as a mascot. Before the 2001 season, The Ohio State University hired Jim Tressel to coach its storied football program. Since that time, Coach Tressel has become the face of Big Ten football by winning seven conference championships, six bowl games, and the 2002 BCS National Championship. Unquestionably, Coach Tressel is very well-known among American sports fans, including those in Michigan who have witnessed Tressel’s teams completely dominate the Wolverines over the past 10 years.
On September 3, 2010, a Virginia corporation by the name of Know Play Apparel, Inc. (“Know Play”) filed an intent-to-use trademark application seeking registration of the mark IN TRESSEL WE TRUST for a wide range of clothing items and athletic apparel. Without even questioning whether the word TRESSEL referred to a specific living individual (for which consent would be required), the Trademark Examining Attorney approved the application for publication. I guess the Trademark Examining Attorney was either (1) not a college football fan, or (2) a rabid Michigan fan.
To the surprise of nobody, The Ohio State University opposed the application on two distinct grounds. Ohio State’s first claim is based on priority and likelihood of confusion with its alleged use of the name TRESSEL in connection with products bearing the name and likeness of Jim Tressel. It appears from the Notice of Opposition that Ohio State licenses and markets merchandise (such as posters, figurines, decals, etc.) that unmistakably portray its football coach. Although I don’t know for sure, I assume there is a contractual arrangement between Jim Tressel and Ohio State that allows Ohio State to sell such merchandise and to bring lawsuits for infringement. However, from the examples attached to the Notice of Opposition, it is not particularly clear whether Ohio State is even using the name TRESSEL as an actual trademark for specific products and services. In my humble opinion, printing the name “Coach Jim Tressel” on the base of a Jim Tressel bobblehead is a merely descriptive and ornamental use of the name. The same goes for a signed poster showing a photograph of Jim Tressel walking the sidelines during one of his many bowl games. Such ornamental uses simply do not identify and distinguish Ohio State’s licensed products from those produced by others. So, at least in my mind, there is a legitimate question as to whether Ohio State will be able to show the priority of use necessary to prevail in a trademark opposition based on likelihood of confusion.
Now, I think Ohio State’s second ground for opposition based on a false suggestion of a connection is a little stronger. In order to prove false suggestion of a connection, Ohio State will have to show all of the following:
(1) IN TRESSEL WE TRUST is a close approximation of the name or identity of a person or institution;
(2) the public would recognize the mark as being a close approximation of the name or identity of the person or institution;
(3) the person or institution identified in the trademark is not connected with the products/services offered offered in connection with the trademark;
(4) the fame or reputation of the named person or institution is of such nature that a connection with such person or institution would be presumed when IN TRESSEL WE TRUST is used in connection with the products/services
I don’t think anyone in their right mind (including Know Play) would deny that the TRESSEL portion of the IN TRESSEL WE TRUST mark is a close approximation of Jim Tressel’s name, that the relevant purchasing public would recognize the mark as referring to Jim Tressel, and that the reputation and fame of Jim Tressel is substantial enough that a connection between Jim Tressel and the clothing items offered under the IN TRESSEL WE TRUST trademark would be presumed. While I believe that Jim Tressel himself would have a slam dunk case against Know Play, the wrinkle here is that The Ohio State University is the named Opposer, not Coach Jim Tressel. On its face, the IN TRESSEL WE TRUST mark does not refer to the institution of The Ohio State University. Therefore, Ohio State will basically be arguing that Coach Tressel is so strongly associated with Ohio State that the reference to Jim Tressel is akin to a reference to the University itself.
Honestly, I can’t buy that argument for a couple of reasons. Let’s say Jim Tressel jumps ship tomorrow to coach my beloved Wisconsin Badgers. Clearly, there will always be a significant historical connection between Tressel and Ohio State due to the immense success he’s had with the football program. But, would that connection allow Ohio State to oppose an application filed by the University of Wisconsin for TRESSEL ROCKS on the basis of a false suggestion of a connection? I think not. What if Coach Tressel retires from coaching the Buckeyes at the end of his contract and files his own application for TRESSEL IS THE BEST FOOTBALL COACH IN HISTORY? Could Ohio State go after Tressel himself for a false suggestion of a connection with the University? That would be preposterous.
So those are my thoughts on this opposition. Oh, and if you continued to have any doubt that Know Play’s IN TRESSEL WE TRUST trademark is meant to refer to Jim Tressel, you’d likely change your mind if I told you that Know Play filed trademark applications to register the following marks for athletic clothing and apparel:
IN STOOPS WE TRUST (Serial No. 85180461) (Bob Stoops – University of Oklahoma football coach)
IN MILES WE TRUST (Serial No. 85180373) (Les Miles – Louisiana State University football coach)
IN MEYERS WE TRUST (Serial No. 85123233) (Urban Meyers – University of Florida football coach)
IN SABAN WE TRUST (Serial No. 85123203) (Nick Saban – University of Alabama football coach)
IN BEAMER WE TRUST (Serial No. 85107662) (Frank Beamer – Virginia Tech football coach)
It looks like I better call dibs on IN BIELEMA WE TRUST before Know Play steals it. And if any Michigan fans out there want IN RODRIGUEZ WE TRUST, it’s all yours. I’m pretty sure even Know Play wouldn’t apply for that…