Fast track to a cease and desist letter

You cannot be serious!  What in the world was this guy thinking?  Did he really think he could register the trademarks OHIO STATE BUCKEYES and OHIO STATE LADY BUCKEYES for water, soda and energy drinks.

Just the act of filing the application for registration will no doubt come to the attention of Ohio State's counsel, who should send this guy a cease and desist letter.  No doubt he already got one, as his site appears to be down.

He just got office actions here and here.  Excerpt from the Lady Buckeyes office action:

Registration is refused because the proposed mark consists of or comprises matter which may falsely suggest a connection with Ohio State University.  Although not connected with the goods or services applicant provides under the proposed mark, Ohio State is so famous that consumers would presume a connection.  Trademark Act Section 2(a), 15 U.S.C. §1052(a); TMEP §§1203.03, 1203.03(e) and 1203.03(f); See generally University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990); University of Alabama v. BAMA-Werke Curt Baumann, 231 USPQ 408 (TTAB 1986); In re Cotter & Co., 228 USPQ 202 (TTAB 1985); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).

The following is required for a showing of false connection under Section 2(a):

·        the mark sought to be registered is the same as or a close approximation of the name or identity of a person or institution;

·        the mark would be recognized as such;

·        the person or institution identified in the mark is not connected with the goods sold or services performed by applicant under the mark; and

·        the fame or reputation of the named person or institution is of such a nature that a connection with such person or institution would be presumed when applicant’s mark is used on its goods or services.

In re Nuclear Research Corp., 16 USPQ2d 1316 (TTAB 1990); In re Cotter & Co., 228 USPQ 202, 204 (TTAB 1985); Buffett v. Chi‑Chi’s, Inc., 226 USPQ 428, 429 (TTAB 1985).

Applicant’s mark OHIO STATE LADY BUCKEYES refers to Ohio State University and would be recognized as such.  Ohio State University is among the largest and best known Universities in the country.  See, e.g., the attached Wikipedia entry.   Applicant does not appear to have any commercial connection to Ohio State University.  Ohio State is so well known and licenses its name in various forms for so many collateral goods that consumers are likely to presume a connection between Ohio State University and applicant’s goods.  Accordingly the mark creates a false connection between applicant and Ohio State University. 

If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).

I'm still scratching my head on this one.

Oh well.  Go Blue.

Tags: Go Blue, trademark, registration, cease & desist, wtf, office action, 2(a), false connection, refusal