What The???
by Nicole Rash
July 11, 2022 — “The” is now officially a registered trademark with the United States Patent and Trademark Office (USPTO), registered to “The” Ohio State University on June 21, 2022. It was not an easy feat for The Ohio State University as it had to battle it out against Marc Jacobs Trademarks, LLC (Marc Jacobs).
The legal battle started on May 6, 2019, when Marc Jacobs filed an application to register the word “the” as a trademark for use on clothing, and accessories associated with his Marc Jacobs apparel brand. Marc Jacobs claimed a first use date of December 3, 2018. The Ohio State University filed its own application to register the word “the” on clothing after Marc Jacobs’ application, on August 8, 2019, however, the university’s first use in commerce was as early as 2005. Because Marc Jacobs filed its application first, the USPTO issued the Ohio State University an office action and suspended its application pending the results of Marc Jacobs’ application.
The USPTO examining attorneys for both applications determined that their uses of the word “the” were ornamental. In order to satisfy the “use of commerce” requirement for a trademark registration, the mark must clearly identify the source of goods and distinguish them from the goods of others. This means that a decorative use of a word, symbol, design etc., does not function as an identifier of source of a particular product, thus does not satisfy the “use of commerce” element.
The USPTO rejected the Marc Jacobs application in March 2020. Marc Jacobs filed a successful request for reconsideration which led to Ohio State University to respond to the publication for opposition. The Marc Jacobs application is still pending.
The Ohio State University also encountered this ornamental problem; however, the university was able to overcome it by showing that the word “the” is not just ornamental. “The” was being placed where trademarks usually go, like on the label on the inside of the shirt and on its website. This placement and source identifier was enough to satisfy the “use of commerce” prong, allowing the word “the” to be officially registered with the USPTO on June 21. 2022.
This does not mean that no one can use the word “the” in a trademark anymore. The Ohio State University has only registered it in Class 025 (clothing). Furthermore, purely ornamental uses of the word should not put apparel sellers at risk of infringement liability. For example, The Rolling Stones would not be sued by the Ohio State University because the Rolling Stones is trademarked as “Rolling Stones” and not “The Rolling Stones”. Consumers would likely not associate a shirt with the word “the” on it to originate from the Rolling Stones.
For any questions about trademarks, ornamental challenges, and trademark strategies, get in touch with us at “the” Gleam Law.
