Can "The" Be Trademarked by a Public University?
Posted: Oct 30, 2019
A common question asked of trademark lawyers is whether it is possible to secure a trademark for a fairly common word or turn of phrase. There are an array of issues associated with trademarking a common term or word, but that does not stop individuals, business entities, and even universities from seeking to trademark common parlance.
A prime example is found with The Ohio State University, which filed an application with the United States Patent and Trademark Office ("USPTO") attempting to trademark the word "the." Yes, you read that correctly. A public university sought to trademark "the" which is arguably one of the most commonly used words in the English language.
According to the trademark application, which was assigned No. 88571984 by the USPTO, Ohio State is attempting to trademark the use of the word "the" for merchandise such as t-shirts, hats, and other university paraphernalia, according to CNN.com. It is worth noting that the university has not always been known or referred to as The Ohio State University. In fact, when the University was founded in 1870, it was known as the Ohio Agricultural and Mechanical College. Eight years later, it officially became The Ohio State University.
Trademark Application Denied by USPTO
Not surprisingly, USPTO denied Ohio State's trademark application. The federal agency determined that the use of "the" by Ohio State, according to its application, failed to function as an actual trademark. Rather, it was more akin to "a decorative or ornamental feature of [the] applicant's clothing," according to the USPTO's denial letter. As a result, using "the" did not function as a trademark to indicate the source of Ohio State's clothing and to identify and distinguish the university's clothing from other entities.
What is Needed for a Viable Trademark Application
To successfully apply for a Trademark that will be registered for a specific brand of clothing, the trademark needs to be used in a "trademark fashion." Basically, this means the term has to be used on tagging or labeling for a particular product. Simply placing "the" on a t-shirt, baseball cap, or other piece of merchandise is not enough to meet the legal threshold for trademark use.
Ohio State Proactive with Trademarks
OSU has not limited its trademark pursuits to "the." The University also filed trademark applications for the names of football coaches Urban Meyer and Woody Hayes when those names appear on university clothing, toy figurines, bobbleheads, and other paraphernalia.
Ohio State is Not Alone in Its Pursuit to Trademark "The"
OSU was not the first to try and trademark "the." In fact, prominent fashion label Marc Jacobs filed its own trademark application for "the" in May 2019. Similarly, the USPTO denied the application by stating that the fashion company had only shown itself using "the" as part of longer brand names, such as "The Backpack Marc Jacobs," according to Law360.com.
Pursuit of "The" Trademark is Not Over
Despite the denial of the initial application, OSU has an opportunity to remedy the issues cited by the USPTO and re-file for a trademark. However, OSU would need to take steps, hopefully with the guidance of an experienced and knowledgeable trademark lawyer, to clearly show that how its use of "the" would apply in specific ways signifying association with Ohio State and the University's brand. For example, Ohio State could seek to trademark "the" when used in a specific circumstance, such as a scarlet and grey baseball cap with "the" on the front, according to the aforementioned CNN article.
George Anderson is a freelance writer, blogger, and entrepreneur. I love reading, outdoor activities, traveling and staying current with new trends