“THE” Trademark of the Year? Ohio State University Trademarks THE

The registration was not easy to secure. The United States Patent and Trademark Office (“USPTO”) initially refused Ohio State’s application for two reasons.

First, the USPTO argued that “THE” failed to function as a trademark, as Ohio State was only using the word ornamentally on clothing, rather than to signify the source of its goods.

Second, the USPTO cited a potential refusal on likelihood of confusion grounds, because fashion house Marc Jacobs owned an earlier-filed trademark application for the identical mark, covering clothing items.

For three years, Ohio State worked to show the USPTO that, when used by Ohio State and its licensees on clothing, the term “THE” is not ornamental, but rather serves as an indicator of secondary source and sponsorship by Ohio State. It also secured Marc Jacobs’ consent to register the mark, and the parties agreed to amend their respective applications to demonstrate that they could both own a registration for the identical trademark in connection with clothing items, without causing confusion in the marketplace.

Specifically, Ohio State amended its trademark application to clarify that its products are “promoted, distributed and sold through channels customary to the field of sports and collegiate athletics” and Marc Jacobs amended its application to clarify that its products are “promoted, distributed, and sold through channels customary to the field of contemporary fashion.”
 
While the registration is certainly a victory, it does not give Ohio State carte blanche to control the term “THE.” Ohio State’s registration coexists with countless other trademarks incorporating the word “THE” in connection with clothing items. Indeed, many of these registrations are in the collegiate space, including THE PENNSYLVANIA STATE UNIVERSITY, THE UNIVERSITY OF OKLAHOMA, and THE UNIVERSITY OF GEORGIA, among others. Furthermore, it coexists with Marc Jacobs’ registration for the identical standalone trademark THE in connection with clothing items, provided that the products are distributed through different channels of trade.

While the scope of the trademark registration is therefore somewhat narrow, it does give Ohio State another valuable tool to pursue counterfeiters who attempt to free ride off of Ohio State’s goodwill. As Ohio State noted in one of its office action responses, it requested federal trademark protection for the mark “to protect its loyal customer fan base from the prevalence of counterfeit apparel.”

It remains to be seen how broadly Ohio State will try to enforce the registration, including whether it will try to pursue third parties selling clothing branded with “THE” if the clothing is not distributed in the collegiate/sports space, or does not otherwise include additional indicia of Ohio State, such as the buckeye leaves or scarlet and gray color scheme.