As you may have heard, The Ohio State University (OSU) recently successfully registered the word “THE” as a trademark covering “Clothing, namely, t-shirts, baseball caps and hats; all of the foregoing being promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics.” The history of this case is a bit interesting, and it serves as an example of how it can be difficult for a company to register its trademark on merchandise and how important it can be to file for registration early.
“THE” History
OSU is renowned for its successful athletics programs, and its football program is particularly famous and well-received by fans. As OSU explains, on average over 100,000 people attend each home Ohio State football game, and each game receives substantial media coverage. In connection with its athletics programs, OSU sells a variety of merchandise under various trademarks, such as THE OHIO STATE UNIVERSITY, BUCKEYES, OSU, O-H-I-O, and BRUTUS. Through its trademark licensing programs, OSU has generated on average more than $12.5 million in licensing revenues for these marks.
OSU claims that “THE” has been an integral part of its identity since its inception. However, it was not until the 1990’s that the word “THE” began to receive emphasis as part of the name “The Ohio State University.” OSU credits former player Robert Smith as the possible first use when he emphasized the word “THE” during his time as an announcer on Monday Night Football in 1994. Regardless of the exact circumstances of its origin, OSU has been emphasizing the word for years. However, until 2019, OSU had never filed for registration of the word “THE” as a trademark separate from the entire phrase “THE OHIO STATE UNIVERSITY”
“THE” Applications
The lack of registration came to OSU’s attention in August 2019 when it discovered that designer Marc Jacobs had filed a trademark application for “THE” a few months earlier. The Marc Jacobs application covered a wide variety of bags and clothing goods, and apparently, OSU saw this as a threat to its own merchandising of the word “THE” on clothing, hats, and similar merchandise. However, because the Marc Jacobs application was filed first, it took precedence over OSU’s application and was approved by the trademark office first.
OSU’s application was faced with two significant hurdles. First, Marc Jacob’s earlier application blocked OSU because the marks were identical and covered identical and similar goods. One of the cornerstones of trademark law is that marks must be capable of distinguishing the sources of goods in the marketplace, so a mark that is likely to lead to confusion with an earlier-filed mark cannot be registered.
Second, OSU did not persuade the trademark office that the word “THE” used on clothing and other items functioned as a trademark because it was merely an ornamental design or decoration. With regard to clothing specifically, words and designs displayed prominently in the center are usually regarded as part of the product itself, rather than a source-identifier, because customers buy the clothing for the words or design displayed on it. Words or logos that serve as source-identifying trademarks are usually displayed in smaller font and located on the periphery of the clothing. Despite this, OSU tried to argue that there was a connection between “THE” and “THE OHIO STATE UNIVERSITY” such that “THE” was synonymous with OSU. Still, the trademark office rejected this argument because “THE” was not used separately from the entire phrase “THE OHIO STATE UNIVERSITY” in the evidence of record.
“THE” Registration
Following the publication of Marc Jacob’s application, OSU filed an administrative challenge called an opposition, where OSU argued that it had superior rights to use the word “THE” on clothing. However, before the merits of the case were reached, OSU and Marc Jacobs reached a settlement wherein both parties agreed to limit their respective applications to the trade channels that apply to their specific customers. Marc Jacobs limited its application to clothing and bags “promoted, distributed, and sold through channels customary to the field of contemporary fashion.” In contrast, OSU limited its application to clothing “promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics.” This settlement eliminated the conflict between the two marks and successfully removed OSU’s first hurdle.
OSU overcame the second hurdle by changing its application from one based on existing use in commerce to one based on a bona fide intent to use the mark (in effect, admitting that it could not prove that it had been using “THE”). OSU then filed another amendment to change the application back to one based on use in commerce. As evidence, OSU provided new screenshots from its website showing clothing with the word “THE” sold under a dropdown menu labeled THETM and it changed the label on the shirt’s collar to read “THE Team Shop.” The Examiner accepted this evidence and approved the mark for registration.
What is interesting about this legal maneuver is that OSU was still able to claim that it had been using the mark “THE” since 2005, even though its earlier evidence was unable to show that OSU was using “THE” to identify the university. It was only after OSU rebranded its team store in July 2021 and began calling it “The Team Shop” (it was previously called “The Official Team Shop of Buckeye Nation”) that it was able to produce the new evidence showing use of the mark “THE” as a brand. However, the trademark office does not examine whether use actually began on the claimed date. Rather, the Examiner only looks at whether the evidence you presented shows that the mark is currently in use. What this means is that if a third party does not believe that OSU is entitled to a priority date of 2005, it is up to that third party to challenge this claim in court. Whether OSU would be able to defend its claim in court remains to be seen.
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