Ohio State Gets ‘THE’ Trademark Rejection—For Now

The Ohio State University didn’t use “The” correctly to create a clothing trademark, and it’s not the only one to miss the mark.

A U.S. Patent and Trademark Office examiner Sept. 11 refused the university’s bid to register the common article as a trademark for clothing. The ruling came exactly two weeks after the agency refused a “The” trademark for fashion designer Marc Jacobs.

The rejections show that a trademark not only must be connected to a product but actually function by itself as an indicator of its maker. Ohio State and Marc Jacobs can revise their applications.

Entities can register seemingly simple, common words if they meet the legal requirements, trademark attorney Josh Gerben of Gerben Law Firm PLLC said.

“The legal rights would be exceptionally narrow,” Gerben said. If Ohio State eventually wins a registration for “the,” it could only sue for infringement if another entity used the word “The,” by itself, as a trademark for T-shirts and hats, he said.

Ohio State initiated its bid to register “The” for hats and T-shirts in August. The application included a screenshot of a red T-shirt available online with “THE” in large gray letters, above a much smaller Ohio State logo.

A trademark examiner said the university’s use of “The” was “merely ornamental” and didn’t function as a trademark. Consumers don’t always perceive designs or slogans as trademarks on clothing, even if they’re large or prominent, the examiner said.

The trademark office also told Ohio State that Marc Jacobs had already attempted to register “THE,” though that application also failed in its first attempt. It included a sample showing a backpack labeled “THE MEDIUM BACKPACK” emblazoned with the words “The Backpack Marc Jacobs.” The examiner in that case said the full phrase didn’t match the trademark sought, and didn’t function as a trademark.

‘Exceptionally Narrow’

Ohio State was derided on social media for trying to register “THE” as a trademark. The University of Michigan’s Twitter account tweeted “TM,” the symbol for a trademark, with a picture of the word “OF” to poke fun at its collegiate sports rival.

The two companies could fix their applications by submitting samples of them featuring the mark as a brand on online or standing displays, Gerben said. Labels and tags, however, are “the gold standard” for using a trademark on clothing, he said.

“With anything else as an alternate specimen, ultimately the trademark office has discretion on whether it’s enough or not,” Gerben said.