Ohio State University (“Ohio State”), the famed university in Columbus, Ohio, has registered a trademark for the word “THE.” You might be surprised to hear this, since the word “THE” seems quite generic. You would be correct! However, this is a prime example of how a common word like “THE” can become a trademark. Ohio State’s path to registration was not without hurdles, however, and they teach important lessons.
First, why did the U.S. Patent and Trademark Office (USPTO) allow Ohio State to register “THE” even though it’s a common word in the English language? Well, as applied to the clothing for which Ohio State uses the mark, “THE” doesn’t describe any features of the goods, so it’s not a descriptive designation that cannot be registered. And Ohio State had its reasons for wanting to register “THE.” The University wanted to differentiate itself from (and avoid confusion with) others that use the acronym OSU, such as Oregon State University and Oklahoma State University. Ohio State found the solution to this by adding the word “THE” in front of “Ohio State University.” (See photo below.)
Now come the lessons in trademark law. Ohio State wouldn’t have received a registration for “THE” unless it used the mark prominently, as it did, in a way that created a separate commercial impression from the school’s name. Lesson one: use any trademark often in close proximity to other words (as THE is to OHIO STATE), in a different typeface or more prominent lettering, and always separately from the other words.
Second, the USPTO rejected Ohio State’s application for “THE” trademark. The USPTO reasoned that the mark was merely a decorative or ornamental feature of Ohio State’s clothing and did not function as a trademark to indicate its source or to identify and distinguish the clothing from those of others. Specifically, Ohio State’s original specimen (pictured above), which it submitted to the USPTO to demonstrate its use of the mark, shows “THE” in prominent lettering on the upper-center area of the front of the shirt. The specimen shows “THE” used in a merely decorative manner, leaving consumers with little or no understanding of its source-identifying significance. Lesson two: for any goods, but especially those like clothing on which the mark could be mistaken for ornamentation, use the mark on packaging, a hangtag or label that will be associated by consumers with the source of the goods, not just on the visible parts/surface of the goods.
Ohio State faced another hurdle because Marc Jacobs had also applied for the “THE” trademark. Like Ohio State, Marc Jacobs submitted a specimen showing “THE” on the front of a shirt (see below).
The USPTO rejected Marc Jacobs’ application for the same reason it rejected Ohio State’s. Jacobs’ “THE” was merely a decorative or ornamental feature of the clothing, and thus did not function as a trademark to indicate the source of Marc Jacobs’ clothing and to identify and distinguish Jacobs’ clothing from others.
As noted above, there is a simple solution to this dilemma, and both parties’ counsel followed it, obviating the USPTO refusal. Ohio State simply converted its application from use-based to intent to use, enabling it to submit a specimen showing “THE” on the label of the shirt, as depicted below.
Marc Jacobs deployed the same strategy, giving it the opportunity to submit a new specimen (which to date it has not done, but will, no doubt, before the three-year period to do so expires).
You may be wondering if Ohio State faced any rejection based on Marc Jacobs’ application, or vice versa. In fact, since Marc Jacobs filed its trademark application first, the USPTO rejected Ohio State’s application because it was likely to cause confusion with Marc Jacobs’, as the parties’ marks were identical and both applications covered clothing. Ohio State opposed Jacobs’ application, but the issue was resolved when the parties reached a coexistence agreement, which Ohio State submitted to the USPTO. The Agreement recited that there was no likelihood of confusion between the “THE” marks, given the parties’ different trade channels (e.g., consumers wishing to “show affinity for a power five collegiate athletic program, in the case of Ohio State on the one hand, and consumers wishing to show affinity to a high-end/contemporary fashion brand in the case of MJT on the other hand”).
Ostensibly both parties jumped a lot of hurdles simply to register trademarks in the common word “THE,” but this leads us to the third, and final lesson: don’t underestimate the value they took away—or any party can– by registering trademark rights with the USPTO. In the end, both Ohio State and Marc Jacobs came out on THE top!