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  • danaldickson

What is the THE?

Updated: Jul 11, 2022

Recently, The Ohio State University received a trademark registration for the word THE. Some clickbait articles misleadingly suggested this was a big problem. So, I’m here on cleanup duty to dispel a few myths and to clarify that this really is nothing to worry about.

1. This result is nothing new.

Reading through some articles on this topic, you’d get the idea that nothing like this has ever happened before. So, you might be surprised to learn that The Ohio State University was not the first company to register the word THE as their trademark. American BMX Company registered the word THE for use with various types of helmets, goggles, elbow pads and knee pads last year. Jing Wang has held a registration for the word THE for use with electric charging cables and various products related to cell phones since 2017. Those are just the registrations for standard character marks (the ones that cover use of the mark in any font, color, or stylization). There are at least six other active registrations for special form marks featuring only the word THE (these cover use of the mark only in the particular font, color, or stylization shown in the mark drawing).

In fact, the university was not even the first applicant to the USPTO for registration of the mark THE with clothing goods in Class 25. That was Marc Jacobs Trademarks, L.L.C. When it looked like the Marc Jacobs application might block the university’s path to registering the mark THE, the university opposed the Marc Jacobs application. The parties eventually reached an agreement.

While it might seem odd at first, it is possible to register very common words (including articles like A, AN, and THE) as trademarks in the U.S. It is even possible to register symbols that represent these very common words. There are currently 28 active trademark registrations for the word AN, seven for the word AND, and 102 for the ampersand symbol (“&”).

How is that possible? Remember that the whole job of a trademark is to tell you the source of the product you’re looking at. When we see a Nike swoosh on a pair of sneakers, we know their source. When we see the JUST DO IT slogan on a t-shirt, we know where that comes from. And when we see the word NIKE on a pair of socks, we know where they’re from, too. As long as the common words or symbols discussed above are used in a way that helps consumers understand the source of certain products, they’re functioning as trademarks.

It's important to remember that this application was for a mark that consists entirely and solely of the word THE. We have plenty of decisions from the U.S. Trademark Trial and Appeal Board stating that when similar marks are compared, adding the word THE to the beginning of one mark generally won’t impact the analysis or make the marks less similar. For example, in 2009, the Board stated that the marks WAVE and THE WAVE were “virtually identical,” and emphasized that “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.” In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009). Nothing in the record for the university’s application to register the mark THE indicates that there is any change to that general rule.

2. It doesn’t mean The Ohio State University can prevent everyone else from using the word THE in their marks.

Some articles tried to alarm people and make them think that the word THE was now unavailable for use in their marks or that if they were already using marks that included the word THE they might get into trouble. Trademark registrations don’t work that way. A trademark registration is never a “blanket” right to exclude anyone and everyone from using the wording in your mark regardless of what those other people or companies might be offering under their marks or what other wording might appear in their marks. The registration is always tied to the specific products/services that the mark owner uses their marks with. The USPTO did not give The Ohio State University the right to stop everyone else from using the word THE in their marks. Instead, they gave the university the exclusive right to use a mark that consists entirely and only of the word THE with t-shirts, baseball caps and hats “being promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics.” That is a pretty narrowly defined right.

Even if we look just within the clothing field, there are already thousands of marks that include the word THE [plus additional wording] and that are registered with the USPTO for use with clothing goods in Class 25 (goods related to the ones listed in the registration owned by The Ohio State University). The registration granted to the university does not mean that all of those mark owners have to stop using the word THE in their marks or that other mark owners will never be able to register their marks if they combine the word THE with other wording and use the mark with Class 25 clothing goods.

What’s the point of owning a registration like that, then? The Ohio State University’s registration for the mark THE could help it fight against people and companies manufacturing knockoff clothing sold under the THE mark. That can be worth a lot. According to the New York Times, the university makes more than $12 million annually from their trademark and licensing program.

3. This wasn’t a mistake.

Some reporters got confused because the application to register this mark was originally refused. That refusal was based in part on “failure to function” grounds. Some of them interpreted that phrase to mean that the word THE simply can’t “function” as a trademark. To be clear, the USPTO was not arguing that the word THE could never function as a trademark. They were arguing that there was a problem with the way that the mark appeared in the specimen submitted with the application (photographs of shirts the applicant thought showed use of the mark in the real-world marketplace).

Applicants who are trying to register marks for use with clothing, especially hats or shirts, often face this type of refusal. This happens when the wording or design on the clothing just functions as decoration or ornamentation instead of as a trademark. The wording or design is making the clothing more attractive, but it isn’t helping anyone identify the source of the clothing. I happen to have another post about that. For more details about this type of refusal, click here. There are multiple ways to overcome an ornamental refusal, but one of them is to submit evidence that the wording or design really does indicate source. Once the applicant was able to submit different specimens showing that they use the word THE to indicate the source of the clothing and not just to decorate it, the “failure to function” refusal was no longer a problem.

Is it kind of strange that the word THE can be registered as a trademark? Sure. Did this decision shake the foundations of trademark law? No.

This information was posted on July 10, 2022 and was accurate as of the date of writing. However, the law changes frequently, and readers should not rely solely on general online information but instead should consult a licensed attorney by asking questions about their specific issues when they need legal advice.

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