Even The Word “The” Can Be A Trademark

By Jeffrey M. Kaden

If you have ever watched Monday Night football, you may have noticed that during the program’s introductions, pro football players who played at and graduated from Ohio State exuberantly identify their alma mater as The Ohio State University.  Well, guess what? The U.S. Trademark Office has now granted Ohio State a federal trademark registration for the word THE in connection with certain sports and related apparel.

By way of background, the United States Patent and Trademark Office initially refused Ohio State’s trademark filing for two distinct reasons: the trademark was considered “merely ornamental” and the clothing company Marc Jacobs had also filed a trademark application for the word THE just a few months earlier. The Trademark Office commented as follows:

Registration is refused 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…

Ohio State responded by providing evidence which apparently demonstrated that Ohio State was not using the trademark in a “merely ornamental” manner; it also settled the dispute with Marc Jacobs, with the two sides agreeing that they could both own, license and use the word THE for their respective products.

Accepting Ohio State’s arguments at face value, the Trademark Office granted Ohio State a federal registration in International Class 25 covering clothing – specifically t-shirts and hats – with all of the apparel being “promoted, distributed and sold through channels customary to the field of sports and collegiate athletics.”

A few takeaways. First, the word THE is probably the most commonly used word when speaking and writing English. That said, it is understood in the trademark world that gaining a federal trademark registration does not give Ohio State unfettered discretion in terms of use.  Correctly, the Trademark Office registration limits Ohio State’s trademark rights in the word THE specifically to use in connection with sports and collegiate athletic clothing.

Second, will the grant of Ohio’s trademark application for the word THE embolden other colleges and universities to seek federal trademark rights for common terms used in the English vernacular? Would one be surprised if Ohio State’s arch rival the University Of Michigan filed for federal trademark protection for the term OF? What about The University At Buffalo filing for the word AT, Columbia University In The City Of New York filing for the word IN, and Franklin & Marshall College filing for the designation &? Would any of these be accepted?

Third, how was Ohio State able to overcome the Trademark Office’s ornamental rejection? An ornamental rejection is when the Trademark Office refuses to grant registration because the sample of how one actually uses the mark (known as the “specimen”) indicates that use of the mark is merely as an ornamental or decorative feature and not as an indicator of source. Ohio State was evidently able to overcome this rejection by submitting substantial evidence that the purchasers of products bearing the name or term THE understood it to indicate that the source of the product was in fact Ohio State.

So where does this leave us? Well, I for one think that Ohio State’s federal registration is vulnerable to attack and that a petition to cancel the registration could well be successful. I would not be surprised to learn of a number of such petitions being filed by competitor colleges and universities.

Indeed, as a proud engineering graduate of The Johns Hopkins University,  shouldn’t Hopkins also have the right to use the term THE in connection with athletic apparel, or at least in connection with lacrosse athletic apparel, given Hopkins’ long-standing association with the sport of lacrosse. I for one would vote YES.

What do you think?