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15 August 2019TrademarksSarah Morgan

Ohio State Uni hit with criticism over ‘The’ TM attempt

The Ohio State University hit headlines this week, after attempting to register the word ‘The’, perhaps the most common word in the English language, as a trademark.

Ohio State applied for the trademark on August 8 at the US Patent and Trademark Office (USPTO), covering t-shirts, baseball caps and hats.

T-shirts featuring ‘The’ are already on sale on the university’s website and, according to its application, the university has been using ‘The’ since 2005.

“Like other institutions, Ohio State works to vigorously protect the university’s brand and trademarks,” university spokesman Chris Davey told WIPR in a statement.

Davey added: “These assets hold significant value, which benefits our students and faculty and the broader community by supporting our core academic mission of teaching and research.”

After the news broke, Ohio State’s bitter rival University of Michigan responded on Twitter with a trademark of their own.

Lawyer Josh Gerben was first to discover the trademark application.

“My prediction here is that this application has issues out of the gate. In order for a trademark to be registered for a brand of clothing, the trademark must be used in a trademark fashion (in other words, tagging or labelling of the products). In this case, just putting the word ‘The’ on the front of a hat or the front of a shirt is not sufficient trademark use,”  he said in a video posted on Twitter.

Gerben added that Ohio State was likely to receive an initial refusal from the USPTO.

He concluded: “It’s a little surprising that the university would not have been a little bit more sophisticated in the specimens that they submitted with their application.”

Many replies on Gerben’s thread criticised the trademark attempt.

Darren Heitner, founder of Heitner Legal, commented that there was a “strong chance” an examining attorney finds this trademark to be mere ornamental usage.

The USPTO will refuse registration of a mark where the sample of how you actually use the applied-for mark is “merely as an ornamental or decorative feature on the goods and not as a trademark to indicate the source of the goods”.

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More on this story

Trademarks
12 September 2019   The US Patent and Trademark Office has issued an initial decision refusing the Ohio State University’s attempt to register the word ‘The’ as a trademark.
Trademarks
29 June 2022   The Ohio State University has been granted rights to use ‘THE’ on its merchandise, and fashion brand Marc Jacobs is awaiting registration for the same. But, asks Sarah Speight, should we be surprised?