Can Ohio State Trademark the Word “THE”?

November 4, 2019
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Ohio State University is Seeking to Register a Trademark for its Use of the Word “THE”

College football fans may have likely noticed that players from Ohio State University (“OSU”) take great pride in referring to their alma mater as “The Ohio State University.” To capitalize on that notoriety, Ohio State is seeking to register a trademark for its use of the word “THE.”

Can Ohio State Trademark the Word “THE”?

Ohio State Protects Intellectual Property

It is not completely surprising that OSU is pursuing this trademark application given that it has taken a proactive approach to protecting its intellectual property. At last count, the university has 150 trademarks in 17 different countries, including the names of football coaches Woody Hayes and Urban Meyer.

Ohio State also aggressively polices the use of its trademarks. In 2013, Ohio State sent a cease-and-desist letter to Brittney’s Cakes, alleging that the bakery infringed its marks in selling Ohio State-themed cakes. In 2014, OSU sent a cease-and-desist letter to Columbia Gas of Ohio, which used a photo of Ohio State’s student section as part of a promotion to give away OSU football tickets.

While some characterize OSU as a “bully,” the university maintains that it is simply protecting its brands. “Like other institutions, Ohio State works to vigorously protect the university’s brand and trademarks,” Chris Davey, a spokesman for the university, said in a recent statement to the Columbus Dispatch. “These assets hold significant value, which benefits our students and faculty and the broader community by supporting our core academic mission of teaching and research.”

What Is Eligible for Trademark Registration?

According to Ohio State’s trademark registration application (Application No. 88571984), the university seeks to use the word “THE” primarily on t-shirts, baseball caps and hats. While OSU’s efforts to trademark such a common word has caused a lot of buzz in the media, it will be up to a USPTO trademark examination attorney to make the final call.

Under U.S. trademark law, “A trademark or service mark includes any word, name, symbol, device, or any combination, used or intended to be used to identify and distinguish the goods/services of one seller or provider from those of others, and to indicate the source of the goods/services.” The primary requirement is that the mark indicates the source of the goods in the mind of the consumer.

Common words and phrases that simply name a product are not eligible for trademark protection. However, common words that are arbitrary and not related to the product may be eligible. The classic example is that Apple Inc. can trademark the word “Apple” in reference to its products. However, a fruit business that sells apples can’t register a trademark for the name Apple because consumers would view it as merely conveying general information about the goods or services rather than as a means to identify and distinguish the applicant’s goods/services from those of others.

Because the function of a trademark is to identify a single commercial source for particular goods or services, if consumers are accustomed to seeing a term or phrase used in connection with goods or services from many different sources, it is likely that consumers would not view the matter as a source indicator for the goods or services. As described by the USPTO in its Trademark Manual of Examining Procedures, “The critical inquiry in determining whether matter functions as a trademark or service mark is how the proposed mark would be perceived by the relevant public.”

Not surprisingly, on September 11, the Trademark Office issued an office action preliminary rejecting this application on the ground that OSU’s use of the word “THE” is merely ornamental, and not an indication of source. The examiner notes that the word “THE” appears in the upper-center area in front of the shirt, and the front portion of the hat, where ornamental features typically appear. Further, the examiner opines that the large size of the word “THE” on the clothing further indicates that the word is decorative, and not a source indicator. OSU now has six months from the date of the office action to respond to and attempt to overcome this refusal. 

Key Takeaway

Determining trademark eligibility can involve complex legal analysis and there are certainly a lot of grey areas. In this case, Ohio State may have the resources to take its chances with the USPTO. It is always advisable to consult with an experienced intellectual property attorney before investing significant time and resources developing a brand or logo.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, David Einhorn, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.