29 June 2022TrademarksSarah Speight

Trademarking ‘The’: a lesson in emphasis and cooperation

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?

In a case that has fused the legal, sports and fashion spheres into a debate, The Ohio State University has successfully trademarked one of the most common words in the English language: the word ‘the’.

Registered on June 21, the mark was secured for use on its branded sports and athletics merchandise following a three-year ping-pong with the US Patent and Trademark Office (USPTO) after initially having the application refused on the grounds that the word was “merely ornamental”.

Meanwhile, fashion brand Marc Jacobs has also secured approval from the USPTO to trademark “THE” for use in its apparel and accessories, such as THE TOTE BAG and THE BACKPACK—although it has received a Notice of Allowance and is awaiting registration of the mark.

Agreement to co-exist

Interestingly, Ohio State filed its trademark application several months after Marc Jacobs, although the university proved priority, as it has used the mark since 2005 and indeed began to licence its products at this time—more than ten years prior to the fashion brand’s use of the mark.

And Marc Jacobs has, albeit for a shorter period of time, been using the standalone ‘THE’ in its clothing, for example on its jumpers.

In a parallel appeal, Ohio State had lodged an opposition with the Trademark Trial and Appeal Board (in April 2021) but the two entities agreed to settle the matter just four months later with a co-existence agreement, based on the fact that the two marks are used in different consumer markets.

In the end, the 152-year-old university secured the trademark because it was able to prove the word as a source identifier including, crucially, that it uses the mark on its product labels.

But, its victory is also owing to the interesting history associated with the mark, as argued in the university’s Response to Office Action (dated March 11, 2020).

Emphasis on ‘THE’

In 1878, Ohio State changed its name from “Ohio State University” to “The Ohio State University” to distinguish itself from other universities in the US state. And in 1986, a new logo was created in an attempt to move away from its “OSU” symbol.

And the definite article had organically been adopted by students, alumni and fans of the university’s sports team, the Buckeyes, whose merchandise uses the “THE” alone, without any other wording or imagery. In a wry reference to the university’s perceived high status, the mark is emblematic of the emphasis on ‘The’ when spoken.

In his declaration, Richard Van Brimmer, Ohio State’s assistant vice president, business advancement, affinity & trademark management, said “the emphasis on THE became a permanent part of Ohio State’s culture amongst students and fans by the turn of the century” and that demand for apparel and other products was “predicated by the fact that THE has become shorthand for The Ohio State University and its academic missives and athletic services”.

An unusual case?

So, aside from the context, what do trademark attorneys make of these two cases?

Deborah Greaves, a partner at Withers Bergman, was "a little surprised" that two different brands wanted to register the word ‘THE’ at the same time.

"That's strange to me because I don't find the word to be particularly strong from a trademark perspective,” she says.

Amanda Marston, associate at Holland & Hart in the firm’s trademark group, agrees and says she was amused at the idea of anyone wanting to protect the word. “It's hard to imagine it as a trademark,” she laughs.

But, the emphasis people place on ‘the’ when saying the university’s name is well known, she adds.

“I think anyone that has interacted with someone that attended Ohio State University knows this phrase; if they say, The Ohio State, it really is just part of the lexicon when you talk about the school.

“So it wasn't too surprising that they tried to register it. But it was a little surprising that they successfully registered it.”

A common term

But Jeff Van Hoosear, partner at IP law firm Knobbe Martens, did not find the case surprising, based on the fact that ‘the’ is a common word.

“It is not any different than other common words—such as ‘and’ and ‘or’—that are also registered trademarks,” he says.

And he adds that the way each party’s application was processed at the USPTO was “very routine”.

But Marston found it interesting that the examining attorney didn't focus the initial refusals on the fact that the word is a common term.

She explains that, in the US, there are ‘failure to function’ refusals, which means that a trademark cannot serve as a source identifier. Initial refusals based on this ‘failure to function’—or being ‘merely ornamental’—focus on the size of the mark and its placement, along with other factors that would indicate that the mark was for decorative use, rather than a fourth identifying use.

“So the examining attorney focused on that rather than the fact that it was a common term, which I found really interesting,” says Marston. “I expected to see a little more argument about the idea that you can't prevent anyone else from using THE, so how could you protect it?”

Meanwhile, Rosie Burbidge, partner at UK-based Gunnercooke, is sceptical.

She says there have been 10 attempts to register “The” in class 25 in the UK, of which only two were successful. “The ones who succeeded added another element such as an ellipsis or they were filed as a figurative mark,” she adds.

“This is consistent with my expectations for the UK (even the ellipsis mark is a bit borderline). There are clear public policy reasons for not wanting to give a monopoly over a standard word such as the definite article.

“It is a concern that the USPTO has been willing to grant this application.”

Overcoming hurdles

Greaves points out the university faced many more hurdles than Marc Jacobs did in overcoming approval of the registration of the mark. “The university had to prove that the mark had acquired distinctiveness and was recognised by consumers as a source indicator. And Marc Jacobs didn't have to do that.”

Marston adds that both of the examining attorneys in each case gave the parties the option to amend their use-based applications to intent-to-use. “I think that Marc Jacobs maybe just took that route a little earlier on in the process, rather than trying to submit arguments.”

She notes that Marc Jacobs initially filed a use-based application, a ‘1b’, and then amended it to ‘1a', which is an ‘intent-to-use’ application.

In effect, then, Marc Jacobs started with a 1b. “So its road was just a little easier because it didn't have to fight against the specimen refused,” she explains.

“With a 1b application, you don't submit evidence of use until your Statement of Use deadline or your extended Statement of Use deadline,” she adds. “So the examining attorney didn't have anything to look at, at that point.”

But, she says, it’s not quite over the line. “Before Marc Jacobs can perfect the application and it matures registration, it has to show use of the mark in a way that's not considered merely ornamental.”

A path to litigation?

So, with the mark being a common word, will we see a stream of litigation in its use elsewhere?

Greaves thinks it could, but believes Ohio State has been “very prudent about that”. “If they were going to go after infringement, it would have to be on collegiate-type merchandise, it would be using the same colour scheme, and therefore, clearly trying to trade off their goodwill, as opposed to just random people using the word THE.

“I think Marc Jacobs is going to have an issue with that as well, because it is not limited to collusive merchandise.”

And Marston believes that these trademark wins, especially the Ohio State one, is good news.

“In the trademark world, there's definitely been a lot of focus on the consumer perception of marks—and I don't think that's a bad thing. The way we see and understand trademarks now is much different from when the majority of the Lanham Act was created. And so I think this idea of looking at how consumers understand marks is great.”

But she says she’s not sure how much impact these two cases will really have, “because they didn't touch a whole lot on that acquired distinctiveness of the mark”.

A clear distinction

In the meantime, that distinction between the two entities remains clear. Ohio State added to its trademark application that its products are “promoted, distributed and sold through channels customary to the field of sports and collegiate athletics”.

Similarly, Marc Jacobs amended theirs, stating that its products are “promoted, distributed, and sold through channels customary to the field of contemporary fashion.”

“In order for both Marc Jacobs and The Ohio State University to get a trademark registration for the same mark for similar goods, the parties had to convince the USPTO that there were sufficient differences in where each sold their product, who each sold their product to, and how much each sold their product for, that purchasers wouldn’t confuse a THE t-shirt from Marc Jacobs with a THE t-shirt from The Ohio State University,” explains Van Hoosear.

But it was the cooperation between the two parties that was “most interesting” to him.

“That the parties cooperated so that both could obtain a federal trademark registration for the mark THE for similar goods was a pragmatic approach, and the most interesting aspect of this case to me,” he says.

“I think the coexistence and consent agreement that the parties agreed to—and that was accepted by the USPTO—should be used more often.”

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23 March 2017   Ohio State University has taken on t-shirt designer and printer SunFrog in a trademark infringement lawsuit.
15 August 2019   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.