Football Rivalries Are Matched-up For a Trademark Battle: The Ohio State University vs. The University of Alabama Birmingham

David Newman | January 7, 2024

By David Newman / info@ownyourbrandname.com

Teeing up a collision of The Ohio State University against other collegiate rivals is the decision by the US Patent and Trademark Office to register “The.”  On June 21, 2022, the USPTO registered trademark no. 6,763,118 for “The” for T-shirts, caps and hats in the field of sports and collegiate athletics.  This registration for “The” puts Ohio State within first down yardage of a match-up with other universities to see who may use the article “The,” as part of their school logos on shirts and caps. 

Included in the many universities who use “The” as part of their names is The University of Alabama Birmingham (UAB).  Since 2018, UAB has had a trademark registration for The University of Alabama Birmingham for hats and shirts under registration no. 5,426,171.  While “The” is one word amongst five in the UAB brand, OSU could aggressively assert its mark, if it believed there was a likelihood of confusion among consumers of college hats and shirts.  

For example, Ohio State, during its three-year prosecution of “The,” submitted a specimen to the USPTO that was a photograph of a shirt that depicted the word “THE” predominantly above the OSU logo.  In similar fashion, if UAB were to sell a shirt having “THE” above “University of Alabama Birmingham,” OSU may have grounds to complain.  But OSU would have to advance the ball carefully, since UAB has priority with its registration date well before that of OSU for “The.”  A third party may protest that a mark is generic. TMEP 1715.01. So UAB could have a strong defense by asserting the genericness of “The” trademark being asserted by OSU.   

While UAB is one of many examples of universities that may be butting heads with OSU over its trademark, OSU may have allies in unsuspected places. For example, the USPTO TESS database shows that at least eleven other registrations exist for “THE.”  The earliest is registration no. 1,689,818, is for screws, nuts and bolts in June 1992.  OSU was successful in its conquest of the trademark field in obtaining “The” trademark; despite the existence of “the” identical word in several other trademark registrations.

Whether OSU intends to use “The” trademark as a shield or a sword remains to be seen.  OSU has a trademark licensing program for apparel that generates several million dollars each year and enforcement and policing of its trademarks is a necessary function of such licensing activity. So whether you’re a college administrator or a small T-shirt business owner, you should act carefully.  Many tools are available to help avert conflicts or to establish your own brand or business name.

A great starting place is the USPTO TESS website or options like www.OwnYourBrandName.com that can quickly locate available trademarks and domain names with a single search for free.  By searching databases for your brand, prior to usage of your new name, many pitfalls may be avoided and registration of your mark made easier.

How Student Athletes Can Use Trademarks to Brand Themselves and Protect Their Name, Image and Likeness (NIL) (Continued)

David Newman | October 8, 2023

Part III: Rights of Student Athletes (Cont’d.)

Student athletes can create their own logo to represent their brand.  Whether such a logo is a silhouette of a man, star, circle or pendant, such images/ logos are enforceable trademarks and may be part of a student athlete's branding effort.

“Likeness” May Be Registered As Federal Trademarks.

Whether you play video games for college football, basketball or soccer; it is more exciting when the players are the actual likeness of real-life athletes.  Such “likenesses” are protectable under trademark law. The likeness can be a bundle of IP including the number on the jersey, a name on the jersey and/or a close similarity of features of a student athlete’s face.  For example, as discussed above, if the player in a basketball video game had “Metta World Peace” on the back of the jersey; that is a trademark that is protectable as part of the real Metta World Peace’s likeness.

Branding NIL

Once you have selected the elements that make-up your NIL and filed the appropriate trademark registration documents, it is time to begin branding and promoting your NIL.  Student athletes should start by seeking sponsorships or endorsement opportunities with local businesses who cater to their school.  Start with a few sponsorships at small value and then grow the branding over time to cover larger and larger businesses and sponsorship deals.

With more student athletes using their NIL to create wealth, we all benefit from the democratized IP. Branding is just a form of communication.  Through better communication, we can better understand the messages and movements that each student athlete is a part of and wishes to promote.  So get out there, spread your branding message and monetize your NIL.

How Student Athletes Can Use Trademarks to Brand Themselves and Protect Their Name, Image and Likeness (NIL) (Continued)

David Newman | October 2, 2023

“Names” May Be Registered As Federal Trademarks.

In view of the new revolution in branding that is occurring for student athletes, new tools are needed to protect NIL rights.  To bolster the right of privacy laws to protect NIL rights, registration of one’s name, image and/or likeness as a federal trademark should be considered as an important shield in a branding regime.  By protecting all three rights through trademark registration –N. I. and L.—more potent IP protection may be had. 

Ron Artest played in the NBA for the Los Angeles Lakers and other teams.  He changed his name to Metta World Peace in 2011.  Artest could have registered Metta World Peace as a trademark in order to further protect his NIL. His original name, Ron Artest, probably is not trademarkable.  So by choosing Metta World Peace (although somewhat unusual as a name), he selected a name that could solidify his brand and also is likely protectable under the federal trademark registration system.

Today’s student athletes may take a page from the story of Metta World Peace and select a unique name, tag, moniker, handle or badge to file as a trademark registration.  Using tools available from new websites, such as OwnYourBrandName.com, allow student athletes to select and fine tune a name while tracking whether the name is available as a domain name and trademark.  Using artificial intelligence (AI), such tools provide rapid and fun curation processes.  Branding was never so streamlined or easy for individuals to accomplish.

“Images” May Be Registered As Federal Trademarks.

Michael Jordan’s flying slam dunk image is known world-wide.  The image adorns t-shirts, sneakers and other merchandise.  The mark is covered by US trademark registration no. 97096945, for footwear and retail store services in class 035 filed by Nike, Inc. An image (logo) is protected as a registered trademark. This image is described by Nike as a silhouette of a man with outstretched arms and legs and holding a ball in one hand.

How Student Athletes Can Use Trademarks to Brand Themselves and Protect their Name, Image and Likeliness (NIL) Part I

David Newman | September 19, 2023

Part I: Introduction to Policies

As of now student athletes have been granted new rights to monetize their brands under state regulations and National Collegiate Athletic Association (NCAA) rules.  Protection for a student athlete’s name, image and likeness (NIL) has always been available; but now with the right to monetize their NIL rights, it is more important than ever to use federal trademark registration to protect the NIL for a student athlete.  While common law trademarks have always been available to protect NIL rights, the registration of such NIL rights under federal trademark laws can be the silver bullet to monetize a student athlete’s NIL. As well, by using new search tools, more student athletes than ever can select, curate and sharpen their NIL branding via such self-help tools (e.g. OwnYourBrandName.com) to strengthen their IP position.  These new tools help to democratize IP and begin wealth creation for a whole new group of student athletes.

Introduction to NIL

The NCAA issued an interim NIL policy which permits student athletes to earn compensation from their NIL branding. Sixteen states have also followed suit by enacting their own laws.  For example, Illinois Public Law 102-0042 permits a student athlete to receive market-value compensation for use of their NIL.

June 30, 2021, NCAA identified four new policies:

1. Individuals can engage in NIL activities that are consistent with the law of the state where the school is located. Colleges and universities are responsible for determining whether those activities are consistent with state law. 
2. College athletes who attend a school in a state without an NIL law can engage in this type of activity without violating NCAA rules related to name, image and likeness.
3. Individuals can use a professional services provider (i.e. sports agent) for NIL activities.
4. Student-athletes should report NIL activities consistent with state law or school and conference requirements to their school.

As well, the California Fair Pay to Play Act was launched in January 2023, and includes a number of additional provisions:

a) Bars California colleges from penalizing students who elect to monetize their Name, Image, and Likeness (NIL) rights.

b) Prevents colleges from modifying a student’s athletic scholarship based on the student receiving income from their NIL rights.

c) Prohibits the NCAA from banning California colleges from intercollegiate sports if student athletes elect to exercise their NIL rights.

d) Recognizes the right of colleges to generate revenue for their athletic programs by forbidding 

student athletes from deals that undermine their school’s existing endorsement contracts.

A Millennial Perspective on A.I.

Kwesi | August 16, 2023

Lately people have been panicking about the threat of A.I. programming.  Older generations are in fear that “it’s the machine uprising,” like something out of James Cameron’s The Terminator (1984) or the Wachowski Sisters The Matrix (1999), however, it’s not really the machine uprising we should be worried about, it’s on how industries utilize it. 

Even today, most Millennials are worried about its implementation in the workforce, including myself, a 35 year old who is still hoping that writers of every industry aren’t phased out as a job of yesteryear. Although it’s not A.I. itself, it's rather the industry and the requirement to meet ethical guidelines.

A.I. technology has so much potential, but the flack it’s getting isn’t because it is flawless, no, it's rather that even when it is accessible, it immediately becomes a replacement rather than a tool.  We aren’t really phased-out by actual machines, but by those at the top that would place the machine immediately over labor, without regard to ethical guidelines. 

As a Millennial I can see the good that A.I. implementation can do. The right way to bring it into the culture is to bring the assurance that the workforce of able-bodied people can be sustained. As consumers and users of A.I.  technology we should be aware and ethically responsible at any institution or business that decides to exchange its labor for an A.I. machine for an easy fix to save money. As you see in today’s events, there is currently a writers and actor’s strike from the Writers Guild of America, (WGA), and Screen Actors Guild (SAG). Many streaming services want to implement A.I. and lessen the role of writers and actors, (as well as using their likeness without consent), with reducing their credit and pay as a way to exploit labor practices. The problem here is that it's not the A.I., but the ethical use of it. 

Just as we would research businesses that exploit people and the environment, let us also be mindful when it comes to researching businesses with respect to their labor practices and use of A.I. Only then can we feel that we have a solid future with A.I. in our daily lives. 

Further coverage of this topic will be in future blog articles. Please check in weekly for new postings!

A.I.: An Old Friend in New Clothing (part 2)

Kenji | August 5, 2023

Fast forward to the late 2000s to a world run by social media algorithms and other data-crunching software. Developers started to understand that the technique of deep learning processing massive amounts of digital information in order to approximate human behavior and decision making produced results that were remarkably human-like on the surface. This was made possible, not just by the internet once again, but by the massive global effort to digitize information that followed it.

Generative A.I. is the genius child of deep learning. AI models like GPT and stable diffusion were built from the endless amounts of natural language data available online-essentially, humans talking to one another online for decades about anything and everything, and they learned to interpret human language surprisingly accurately. Being able not only to ‘understand’ idioms and imperfect sentences, but to follow context and ideas over longer conversations has opened up a dizzying range of possibilities. Human-machine interfacing has even made us question the nature of humanity in relation to an invention that increasingly talks and responds like a real human.

In reality, none of this should be too surprising, considering just how much of ourselves we’ve put online. These A.I.s have access to billions upon billions of human interactions. So unless you are certain that you are asking something that none of the billions of other humans have asked in the last 2 decades, your request will quickly be cross-referenced and weighted against countless other conversations on the same topic, and likely by people far more knowledgeable on the subject. Generative A.I. is much like a far ‘smarter’ and friendlier version of a comprehensive internet database, being able to respond and adjust to the smallest nuances in your natural language requests. It is no wonder that Google is reputedly frightened for its future given these new developments.

But therein also lies the shortfalls of current generative A.I.s- the key word here being “generative” in that the A.I. doesn’t really ‘think’ for itself but rather synthesizes the best response based on existing knowledge- and so our dreams of creating a true artificial human, one that can think for itself and provide answers not to satisfy what we want, but to address what we need (but sometimes don’t want to hear), continues unabated.

The current frenzy over A.I. will likely give birth to numerous incredible applications over the next few years, but it is still in its infancy and acts much like a clever dog- good at obeying commands, performing assigned duties and even providing companionship. It isn’t yet a true colleague who can give us difficult but helpful advice based on our personal circumstances, or develop and carry out useful tasks and goals on its own. However, based on the ever expanding amount of knowledge and data being uploaded to the internet every day, this is only a matter of time, and probably much shorter than we think.

A.I.: An Old Friend in New Clothing

Kenji | August 5, 2023

In the span of 30 years, the internet went from a curious novelty frequented by those who were often depicted, (sometimes wrongly,) as basement-dwelling social misfits, tinkering with niche programs to a globally captivating behemoth of a cooperative enterprise with wholehearted buy-in from every demographic, every culture and every personality. We have become addicted to consuming details about the lives of others while posting just as many facts about ourselves, to a captive audience of friends, co-workers and even strangers. This digitization of our lives has not only continued apace, but has astronomically increased the total amount of data available online since 2010.

Accompanying every human innovation have been trends that have redefined our relationship to the world, from early file sharing programs like Napster, to paradigm-shifting inventions like Blockchain. Each of these were made possible by the new powers unlocked by the internet; however, none have been nearly as much of a culmination of decades of technological progress as generative A.I.s, which have recently taken the world by storm.

A.I. is an old concept that humans have been dreaming about for centuries. In 1770, a “machine” namedthe Mechanical Turk sought to astonish people by playing chess against any willing human opponent,presenting itself as a large box-like table with a life-sized mechanical figurine on top that would move thepieces on a chessboard. The device turned out to be a hoax, which in reality contained within it awell-concealed human who would direct the automaton’s moves. But the human desire to imbue anartificial construction with human-like qualities never waned.

(to be continued)

Secrets for Brand Ownership, Development and Monetization

David Newman | July 28, 2023

Developing a base from which a business, hobby or art may spring forth begins with the seeds of creativity that may be called intellectual property (IP). Whether you are composing a song, inventing an engine or making a sandwich, there is required a spark of creativity that may be captured as a patent, copyright, trademark or trade secret. But regardless of the type of IP being used to help gestate your next idea, the first step is important and should be accessible to all who seek to establish a platform upon which to build a living, breathing IP base. Providing easy access to IP is one of the principals of OwnYourBrandName.com. For example, by offering a federal trademark registration process for a low price, we are endeavoring to open the door to IP ownership to a new class of artist, business person or entrepreneur. Also by use of our tools, including the Smart Search and Name Genie, we are offering a unique iterative process by which an individual or corporation may discover new alternative words, phrases or abbreviations.

By harnessing the power of the Smart Search engine--which searches the USPTO trademark database and also uses a synonym search engine--we curate an interactive brand development session. This unique process is both intuitive and purpose driven to allow a user to quickly arrive at a new combination of words, phrases or letters to express the users individual branding concepts.

While all brand creation processes are unique, some branding principals may be helpful to keep in mind. First, using descriptive terms, while desirable from a messaging viewpoint, may raise difficulties later-on when trying to obtain a federal trademark registration. For example, “Chicago’s delicious sandwich shop” may be understandable, it is probably too descriptive. A better choice would be “Hugo’s Hoagies” because it uses the proper pronoun “Hugo’s” and such a brand is likely to be considered “merely suggestive” of sandwich making services and thus, entitled to trademark protection.

Second, what does your brand name sound like when spoken? Choosing words that are easy to say and are not confused with other words should be kept in mind. Third, the brand name should cover your current product or services, yet be broad enough in case you expand or change your offerings. For example, “Hugo’s Hoagies” may not be ideal if you were to give up sandwich making for cupcakes. Finally, does the brand name captures your vision and purpose behind the product or services being offered. Once you have selected a brand name, then the fun really begins! Like trying on a new pair of shoes…go out and test the new brand name. What do your friends and family say about it? Have you tested it with potential consumers?

If your best collaboraters agree with your new brand name, then it may be time to monetize the brand (e.g. make money using it!) The first step is to obtain an appropriate domain name. OwnYourBrandName.com can help to quickly register a domain name using its Smart Search engine. Next use social networking platforms to promote your new brand name. Lastly, keeping a budget in mind, use the brand name in a marketing campaign. In conclusion, branding can be as easy as 1, 2, 3.

Brand it

Own it

Use it!

Smart Search Can Help Streamline Brand Name Selection

David Newman | July 28, 2023

Smart Search is a new way to quickly determine which brand name is going to be best for your new product, service or business name using the OwnYourBrandName.com website. Instead of being bogged down by the complexities of a standard trademark search, a Smart Search gives a quick "availability" rating for the brand name being searched. Smart Search also searches for availability of a domain name at the same time as searching trademarks. The dual search functionality of a Smart Search cuts down the selection process for a new brand name. Try Smart Search for free on OwnYourBrandName.com.