Can you own the rights to THE? How The Ohio State University has shaken up trademark law
Posted on Jul 5, 2022 in Articles
On August 8, 2019, The Ohio State University filed a trademark application for the singular word THE in Class 25 for clothing. On June 21, 2022, Registration No. 6763118 was granted. With far less common word marks receiving refusals from the USPTO, what does a registration for one of the most common words in the English language mean for trademark law?
As college sports fans know, when alumni of The Ohio State University name their alma mater, a particular emphasis is placed on the word “The.” When you read the University’s name on paper, you can almost hear the emphasis on The Ohio State.
However, by definition, a trademark must function “to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.”  If a word or symbol is functional, 15 U.S.C. § 1052(e)(5) states that it does not serve as an indicator of source and is therefore unregistrable. Often, this sort of unregistrable subject matter need be disclaimed, with the applicant stating it has no right to use the word apart from the context of the mark as shown.  Not only are functional components or words refused registration, but certain marks, already registered, can lose their trademark status when they become too generic in the English language to still serve as an indicator of a specific source—think Aspirin or Murphy Bed, two former brand trademarks now fallen victim to genericide.  With the heavy emphasis on the need for trademarks to be distinctive to receive—and keep—their registrations, it seems to go against every notion of trademark law that a registration would be granted for a necessary article of speech.
In response to its application, The Ohio State University did receive a Non-Final Office Action citing a refusal for failure to function as a trademark.  The Examining Attorney issued a non-final rejection because “the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.” 
The United States Patent and Trademark Office (USPTO) also issued an advisory that Application No. 88/416,806 for THE, filed by Marc Jacobs Trademarks, L.L.C. in Classes 18 and 25 for handbags and clothing, respectively, pre-dated Ohio State’s filing date.  The Examining Attorney stated a likelihood of confusion between the two marks was possible, and the ‘806 Application could potentially bar registration of Ohio State’s mark should it pass to registration.  As a result of this conflict, Marc Jacobs and Ohio State entered into a coexistence agreement and amended their applications to distinguish their channels of trade. 
In response to the Office Action, Ohio State listed statistics regarding its athletic accomplishments, alumni, and fan base.  The university responded that “the emphasis on THE became a permanent part of Ohio State’s culture amongst students and fans by the turn of the century. Due to demand by the students, athletes, and fans, Ohio State began to license the Applied-for Mark, namely THE, as a standalone item on apparel and other products as early as 2005. The demand is predicated by the fact that THE has become shorthand for The Ohio State University and its academic missives and athletic services.” 
While the USPTO maintained its refusal, Ohio State filed a Request for Reconsideration, Notice of Appeal, and amended its application to Section 1(b) of the Lanham Act from a use-based application to an intent-to-use application.  An Amendment to Allege Use was subsequently filed one day later, and within a month, a Notice of Publication issued. .
This begs the question: why did Ohio State amend to intent-to-use, when the university used THE on clothing since 2005? While an examining attorney may issue failure to function refusals for intent-to-use applications, as the refusal is generally based on a specimen, such refusals are usually issued for use-based applications.  Thus, amending to Section 1(b) may have increased the likelihood that the refusal would be withdrawn. Further, the USPTO permits a use-based application to be amended to an intent-to-use application “if the refusal is based on the specimen of record and/or, you need additional time to obtain evidence of secondary source or acquired distinctiveness.” 
While the granting of the THE registration was certainly welcome news for Ohio State, the registered mark will still need to coexist with other “The” marks, including that of Marc Jacobs. This narrows the reach of Ohio State’s mark, likely limiting its ability to enforce its mark against others to the solitary use of THE in association with college athletics. Marks using THE in unrelated fields, or even universities using “The” in conjunction with other words, are highly unlikely to infringe.
While Ohio State likely could not have acquired the mark had it not been The Ohio State University with decades worth of evidence emphasizing THE, its acquisition of a registration does highlight response strategies for other applications receiving similar refusals for failure to function or lack of distinctiveness. Namely, how the mark is used matters most, and marks consisting of common words have a greater chance of success when used in an unconventional manner, whether that be an arbitrary use or a use in contravention of that common to the English language. Additionally, a Section 1(b) amendment can give applicants additional time to garner evidence in support of its Application and/or overcome certain refusals.
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 TMEP § 1202.
 15 U.S.C. § 1056
 TMEP § 1209.01(c).
 Office Action, Application Serial No. 88/571,984 at 1 (Sept. 11, 2019).
 Dennis Romero, Ohio State, Marc Jacobs come to truce over trademark of ‘THE’, NBC News (Apr. 23, 2021) https://www.nbcnews.com/news/us-news/ohio-state-marc-jacobs-come-truce-over-trademark-n1265168.
 Response to Office Action, Application Serial No. 88/571,984 at 1-7 (March 11, 2020).
 Id. at 7.
 Final Office Action, Application Serial No. 88/571,984 (Aug. 9, 2021); TEAS Request for Reconsideration After FOA, Application Serial No. 88/571,984 (Feb. 8, 2022).
 Amendment to Allege Use, Application Serial No. 88/571,984 (Feb. 9, 2022); Notice of Publication, Application Serial No. 88/571,984 (March 16, 2022).
 TMEP § 1202.17(c)(ii)(A).
 How to Amend Filing Basis to Intent to Use under Section 1(b), USPTO, https://www.uspto.gov/trademarks/laws/how-amend-filing-basis-intent-use-under-section-1b#:~:text=You%20may%20amend%20the%20application,secondary%20source%20or%20acquired%20distinctiveness (last visited July 1, 2022).