By now, news has broken about The Ohio State University and its official registration of a trademark for the word “THE.” This comes after a nearly three-year battle to clinch legal branding access to a word that’s deeply meaningful to the school’s identity. The university originally filed an application with the US Patent and Trademark Office (USPTO) in August of 2019, but it was rejected because:
a.) The USPTO found it to be “merely ornamental”
b.) Clothing company Marc Jacobs applied for a trademark on the same word months earlier.
The battle ensued as the brands tried to negotiate uses of the word associated with each company. Last year, the university and the designer reached an agreement that allows both of them to register “THE” branded products for continuous use and license.
Branding “THE”
The university started using “the” with its name in 1986 when the institution introduced a new logo in the hopes of moving away from the “OSU” symbol. The move was intended, in part, to distinguish it from two other schools with the same initials – Oregon State University and Oklahoma State University. The trend of emphasizing the word “the” took off in the mid-1990s when the school asked its football players to use it while introducing themselves. It grew into a recognizable cultural phenomenon as NFL players said their names and alma maters for broadcasts during games.
While the Buckeyes don’t own the word “the”, they will get to apply the trademark to applications on clothing and apparel. Specifically, the university’s trademark is limited to clothing — T-shirts and hats — that are sold through “channels customary to the field of sports and collegiate athletics,” according to its trademark.
Proposed Trademarks Must Be Distinctive
While it is common for universities to protect their logos and emblems through trademarks, it is highly unusual to trademark such a vague word; a proposed trademark must be distinctive. The purpose of a trademark is to identify a consistent source (e.g., a person or company) to the consumer. In order for the trademark to do its job, it must be distinctive to the consumer. This means that the mark cannot be so similar to another mark that it causes consumers to confuse the brand or entity associated with that mark.
That’s a tough threshold to meet when we’re talking about one of the most common words in the English language. If a mark is less distinctive, as was the case for The Ohio State University, it may require the applicant to demonstrate public perception or recognition of the mark in order for it to be capable of trademark protection.
Marc Jacob’s actions to trademark the word may have been the catalyst to make the Buckeyes take on the fight to trademark “THE.” The university may have wanted to avoid future fights; If Marc Jacobs were to have gotten the trademark, it would have had the authority to ask Ohio State to stop using it on their apparel.
Now, after the three-year battle against not only other brands, but distinctiveness requirements as well, The Ohio State University can proudly distinguish itself from other universities with one inconspicuous word.
To discuss further, please contact Scott Norcross (SAN@kjk.com; 216.736.7264), Paige Rabatin (PMR@kjk.com; 216.736.7270) or another attorney within KJK’s Intellectual Property practice group.