Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1098446 Filing date: 11/30/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Notice of Opposition Notice is hereby given that the following party opposes registration of the indicated application. Opposer Information Name The Ohio State University Granted to Date 11/28/2020 of previous ex- tension Address 190 NORTH OVAL MALL COLUMBUS, OH 43210 UNITED STATES Attorney informa- SAMANTHA M. QUIMBY tion FROST BROWN TODD LLC 10 WEST BROAD STREET SUITE 2300 COLUMBUS, OH 43215 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected] 6145597282 Docket Number Applicant Information Application No. 88904773 Publication date 09/29/2020 Opposition Filing 11/30/2020 Opposition Peri- 11/28/2020 Date od Ends Applicant Othello International Co LTD 14 FLOOR UNIT A-1 193-195 RATCHADAPHISEK RD KHLONG TOEI, BANGKOK, 10110 THAILAND Goods/Services Affected by Opposition Class 035. First Use: 0 First Use In Commerce: 0 All goods and services in the class are opposed, namely: On-line selling services in which a third- party seller posts items for sale to third-party customers for purchase, namely, online retail store ser- vices featuring a wide variety of consumer goods Grounds for Opposition Priority and likelihood of confusion Trademark Act Section 2(d) Dilution by blurring Trademark Act Sections 2 and 43(c) Marks Cited by Opposer as Basis for Opposition U.S. Registration 5550238 Application Date 01/23/2018 No. Registration Date 08/28/2018 Foreign Priority NONE Date Word Mark O Design Mark Description of The mark consists of a block letter "O". Mark Goods/Services Class 021. First use: First Use: 2003/00/00 First Use In Commerce: 2003/00/00 bowls; drinkware; beverage glassware; travel mugs U.S. Registration 4458983 Application Date 05/17/2013 No. Registration Date 12/31/2013 Foreign Priority NONE Date Word Mark O Design Mark Description of The mark consists of a block letter "O". Mark Goods/Services Class 041. First use: First Use: 1898/00/00 First Use In Commerce: 1898/00/00 entertainment services, namely, providing college level sport exhibition event- sand recreation programs; educational services, namely, providing courses of instruction in sports, fitness and exercise; providing a website containing news and information relating to sports and recreation events, including game sched- ulesand ticket sales U.S. Registration 2689612 Application Date 01/12/1999 No. Registration Date 02/25/2003 Foreign Priority NONE Date Word Mark O Design Mark Description of NONE Mark Goods/Services Class 025. First use: First Use: 1898/00/00 First Use In Commerce: 1898/00/00 clothing, namely, jackets, sweaters, hats and T-shirts Attachments Ohio State_Notice of Opposition_Othello O.pdf(86823 bytes ) Ohio State_Notice of Opposition_Othello O_EXHIBIT_1.pdf(33364 bytes ) Signature /Matthew J. Clark/ Name Matthew J. Clark Date 11/30/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD IN THE MATTER OF: Trademark Application Serial No. 88/904,773 DATE OF PUBLICATION: September 29, 2020 The Ohio State University, ) ) Opposer, ) ) v. ) Opposition Proceeding No.____________ ) Othello International Co LTD, ) ) Applicant. ) NOTICE OF OPPOSITION THE OHIO STATE UNIVERSITY, an Ohio Educational Institution, having a principal place of business at 190 North Oval Mall, Columbus, Ohio 43210 believes it will be damaged by registration of the following trademark application filed by Othello International Co LTD (“Applicant”) for use in connection with “On-line selling services in which a third-party seller posts items for sale to third-party customers for purchase, namely, online retail store services featuring a wide variety of consumer goods” in Class 35 (the “Othello Retail Services”): (the “Applied-for Mark” or “Application”). The Ohio State University opposes the Applied-for 1 Mark under the provisions of Section 13 of the Trademark Act of July 5, 1946, codified at 15 U.S.C. § 1063. As grounds therefore, it is alleged: 1. Established in 1870, The Ohio State University (hereinafter “Ohio State” or “Opposer”), is one of the most well-respected institutions of higher learning in the country. 2. For over 150 years, Ohio State has provided college and graduate level educational courses, sponsored collegiate sporting events and recreation programs, and staged dramatic and musical entertainment events. 3. Ohio State’s academic and athletic programs rank among the best in the nation. It’s undergraduate program and graduate programs for law, medicine, business, engineering, and education are all currently ranked among the top 40 schools in the nation in their respective areas by U.S. News & World Report. Indeed, Ohio State has a long tradition of academic excellence, and its reputation is nationally known. 4. More than 61,000 students were enrolled at Ohio State’s Columbus campus for the 2019 Autumn Semester. Currently, there are over 580,000 living Ohio State graduates worldwide. 5. Ohio State is a member of the Big Ten athletic conference and the National Collegiate Athletic Association. Its athletic teams, known as the “Buckeyes,” enjoy a long and proud tradition of excellence in interscholastic athletic competition and an enthusiastic and loyal following. 6. Ohio State is among only five universities with NCAA championships in baseball, basketball, and football. Ohio State athletic teams have also won national championships in men’s swimming and diving, men’s outdoor track and field, men’s golf, men’s gymnastics, men’s fencing, co-ed fencing, synchronized swimming, and men’s volleyball. 2 7. On average, over 100,000 people attend each Ohio State home football game at Ohio Stadium and approximately 16,000 people attend each Ohio State home men’s basketball game at Schottenstein Center.1 For many years, the demand for tickets to these games has exceeded the available supply. 8. In the last fifteen years, the Ohio State football team has won nine Big Ten Football Championships2 as well as the National Championship in 20143. In addition, the Ohio State basketball team has enjoyed fourteen twenty-win seasons in the last fifteen years. These successful seasons have cemented the presence of Ohio State, including its branding, on a national stage. 9. Ohio State’s athletic teams receive substantial coverage by local, regional and national media, including the national broadcast of certain Buckeye football and basketball games. In the modern era of online media sites, smartphones and mobile apps, the coverage of Ohio State athletics reaches an even wider audience. 10. Ohio State has a storied history of brands, logos, trademarks, and indicia used in connection with its products and services for which it has established tremendous goodwill. One such trademark is Ohio State’s “Block O” mark in standalone and outlined formats: (the “Block O Mark”). 1 This excludes the current 2020-21 season which has limited attendance due to COVID-19. 2 Ohio State vacated its 2010 Big Ten Football Championship. 3 Ohio State has appeared in the College Football Playoff structure 3 times since its inception in 2014. 3 11. Since at least as early as 1898, Ohio State has used the Block O Mark in connection with Ohio State athletic and recreational programs and events by displaying it on the uniforms of student athletes, cheerleaders, drum majors, and marching band members, as well as by displaying the Block O Mark on event programs and other forms of promotional material. 12. The Block O Mark is the heart of the branding and image of Ohio State and is used in connection with all products and services offered and provided by Ohio State, including its athletic, recreational, arts and entertainment programs and services as well as its renowned educational programs, which includes its ROTC program, an elective curriculum that is offered in partnership with the U.S. Army. 13. The Block O Mark is consistently displayed in the middle of the football field at Ohio Stadium where millions of viewers have seen the Ohio State Buckeyes football team play its home games. The Block O Mark can also be found on apparel worn by coaches, players, fans, and recruits, and is also the name of one of the student organizations dedicated to cheering on Ohio State athletic teams (including specific student cheering sections located in Ohio Stadium). The Block O Mark can also be found prominently displayed on its Army ROTC “Buckeye Battalion” Cadet Handbook. 14. As the result of Ohio State’s long, extensive, and continuous use of the Block O Mark as described in the preceding paragraphs, the Block O Mark has achieved favorable national recognition and has become an asset of significant value as a symbol pointing uniquely to Ohio State, its services, products and its goodwill. Indeed, consumers now associate the Block O Mark exclusively with Ohio State. 15. Ohio State strictly licenses and markets many items under its common law and registered trademarks and, due to its fame and storied history, enjoys licensing revenues in the 4 millions each year, averaging over $12.5 million a year over the last 10 years (including over $15.5 million dollars in (fiscal year) 2019).4 Consistent with Ohio State’s branding efforts and licensing program and the demand for apparel, novelty items, and other consumer goods bearing the storied and historical marks of Opposer, Ohio State licenses the use of the Block O Mark on a wide variety of consumer goods. 16. Ohio State has also operated and licensed others to operate retail locations, including online, for the sale of a vast array of consumer goods bearing Ohio State’s trademarks, including the Block O Mark, since at least as early as 1966 for brick and mortar stores and at least as early as 2010 for online stores.