Ohio State Uni’s ‘The’ TM attempt gets initial refusal

The US Patent and Trademark Office ( USPTO) has issued an initial decision refusing the Ohio State University’s attempt to register the word ‘The’ as a trademark.

In its  decision, published yesterday, September 11, the USPTO said it has refused the mark’s registration because it is used as “merely a decorative or ornamental feature” on the university’s clothing.

Additionally, the office said the applied-for mark does not function as a trademark to indicate the source of the clothing, or to distinguish the university’s clothing from others.

As previously reported by  WIPR, the university had filed an application to register the mark on August 8 for goods such as 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.”

In its refusal, the USPTO said that in respect to clothing, consumers are likely to recognise small designs or discrete wording as trademarks rather than ornamental features, whereas larger designs or slogans are not perceived as trademarks when prominently displayed across the front of a t-shirt.

The university had applied to register the word ‘The’, located directly on the upper-centre area of the front of a t-shirt and the front portion of a hat.

It said that because the applied-for mark is displayed in a relatively large size, and dominates the overall appearance of the goods, it appears to be used in merely a decorative manner with no source-identifying significance.

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.

The university now has six months to file a response to overcome the refusal.

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