What is a trademark, and how is it different than a patent or copyright?
On the same day the U.S. Patent and Trademark Office initially denied Ohio State’s request to trademark “The,” Penn State filed a response to continue its quest to trademark “Happy Valley.”
Penn State’s response to the office’s March refusal of its trademark application, filed Wednesday, sought to move the trademark from the USPTO’s principal register to the supplemental register — a move that, if granted, would generally not offer the same level of protections.
“It is common practice to amend a trademark application to the supplemental register after being denied to the principal register,” Penn State spokesman Wyatt DuBois said in a statement Thursday. “Generally, marks on the supplemental register do not receive the same level of protections afforded to trademarks on the principal register, however, there are advantages, such as safeguarding against the registration of very similar marks.”
Penn State’s application filed in December said the university hopes to use the term on shirts, sweatshirts and headwear. The U.S. Patent and Trademark Office in March initially refused the application, saying it was geographically descriptive and ornamental.
Averting concerns over ornamental use amounts to “Trademarks 101,” trademark attorney Josh Gerben has said.
The university’s application depicted the term across the upper-center part of the front of a shirt above the Nittany Lions’ logo. Consumers may not perceive larger designs, like the university’s application, as trademarks when they’re displayed prominently, the USPTO wrote.
“The supplemental register does not confer the presumption of national validity in the trademark,” Gerben said. “... The main difference is, if Penn State were to sue somebody for trademark infringement, they would have a much, much more difficult time in court.”
If the request were granted, the university could use the registered trademark symbol, which tends to act as a deterrent. After five or more years of supplemental registration, Penn State could reapply to be added to the principal register and argue they have since gained acquired distinctiveness, Gerben said.
The application was filed after the trademark’s previous owner, Nittany Embroidery & Digitizing, did not renew the registration. The university said its hope was to “protect against possible improper use” of the term by a third party.
As it prepared to submit its amended response, Penn State spoke with several local businesses and community stakeholders about the application, including the Downtown Improvement District, the Central Pennsylvania Convention and Visitors Bureau and the Centre Region Council of Governments, university spokeswoman Lisa Powers said.
“Area tourism, marketing and business goals and needs have been a central focus of these discussions,” Powers said. “... If and when the trademark is successful, the university and our partners will continue to work together to co-develop an approval process and usage guidelines that protect and serve the interests of our collective community.”
The university does not plan to charge local entities that already used “Happy Valley” on apparel, News and Media Relations Associate Vice President Rachel Pell said.
Penn State was “forthright” during an August meeting with COG, which was “surprised and pleased” to hear about the narrow scope of the filing and Penn State’s lack of interest in pursuing the “myriad” of other Happy Valley uses, COG Executive Director Jim Steff said.
The university seems to be pursuing the trademark for “logical” reasons and is being “proactively defensive,” CPCVB President and CEO Fritz Smith said.
“In my discussions with Penn State’s team ... it has become clear to me that they understand the name ‘Happy Valley’ has a broader meaning that extends beyond just Penn State,” Smith said. “I think they’re very cognizant of that fact and of that responsibility.”