In trademark law, you will often come across someone who uses a particular word or mannerism that demonstrates their unique identity and engenders great pride. Sometimes you may need to break the unfortunate news to them that this thing they love so much cannot be registered as a trademark.
Someone forgot to have that conversation with Ohio State University.
Recently, Ohio State University, or as they insist, The Ohio State University, filed an application with the United States Patent and Trademark Office to register “THE” as a trademark of the University. I guess that would technically make them “THE® Ohio State University,” although I don’t know if that really has the ring they were going for.
So what is the trademark for and will it be granted?
Before we move on, here’s a little disclaimer about the author of this piece. I am a Michigan State Spartan, which I believe gives me the perfect level of balance for this situation from a college football rivalry perspective. Ohio State fans can trust I’m not a University of Michigan fan out to get them, and Michigan fans can trust I’m not an Ohio State fan here to be a white knight. Both can rest assured that I don’t really like them that much. Let’s get to it then.
On Aug. 8, OSU filed its application to federally register the mark “THE” for clothing, particularly t-shirts, baseball caps, and hats. OSU claimed they are already using the mark, and have been using the mark since August of 2005. In support of its use of the mark OSU provided a screenshot of its online shop displaying a t-shirt with “THE” written across it in a huge font.
There are two main takeaways from this.
First, the general purpose of trademark law is to provide protection for those who are using original identifiers to indicate the source of goods or services to the consuming public. For example, if you are in the soft drink industry, you don't want to name your beverage Coca-Cola, as that particular brand has long-since established its original and unique identifiers in the marketplace.
Here, OSU is asking for exclusive permission to the word “THE,” the most often-used word in the English language (I used it 57 times in this blog alone) for the clothing industry, one of the most crowded branding spaces in the world.
Quite frankly, it is absurd for anyone, regardless of industry, to request the exclusive right to use the most common identifying word in the English language. OSU must know this, which makes the trademark filing seem to be more of a marketing effort. It would certainly be a bold tactic to file knowingly baseless trademark claims for publicity, but practically, all I would expect to see here is a refusal to register issued by the USPTO.
Second, OSU’s application seeks to trademark “THE,” but only displays a shirt with “THE” written in huge letters on the front of the shirt above a small Ohio State logo.
This is a common issue with trademark applications in the clothing industry – ornamental use of a mark is not enough to demonstrate you are actually “using” the mark for purposes of trademark law.
This happens often, as whenever a new phrase goes viral, there’s a race amongst people from all over the place to be the first to file a trademark for t-shirts. For a recent example, President Trump accidentally tweeting “covfefe,” was quickly followed by a flurry of applications seeking to trademark the term.
It is always important to remember that trademarks do not protect your goods and services, but protect the identifiers of the source of your goods and services. In the clothing industry, this means that you are not making use of a trademark by printing it across the front of a t-shirt. Instead, you are using a trademark by placing the mark where consumers expect to find information about the source of the shirt, such as the inside of the shirt beneath the collar or the shirt pocket. This doesn’t stop you from displaying the mark prominently on the front of the t-shirt, but this is ornamental use that will be ignored for trademark purposes.
In conclusion, I would be surprised if OSU received a registration for “THE,” and the USPTO will very likely issue a refusal to register the mark. However, if OSU did obtain the registration, it would only give OSU the right to use “THE” in labeling t-shirts and hats. Rest assured you would still be able to walk down the street saying the word “the” and not get tackled by OSC mascot Brutus Buckeye. If you walk onto OSU campus in University of Michigan apparel, I make no such promises.