Ariel Goldberg is an incoming 1L JD candidate at Osgoode Hall Law School.
On June 21, 2022, the U.S. Patent and Trademark Office (“USPTO”) granted The Ohio State University trademark protection for the most common English word: “THE”. However, the fashion house Marc Jacobs has a pending trademark application for an identical “THE” mark. Both “THE” marks are filed under the Class 25 under the Nice classification system, which specifies trademark protection for uses on clothing and headwear. The “THE” marks created a ‘the’ mess and a concern about enforcing trademark rights for a common word.
In 1986, Ohio State University began using ‘the’ to avoid the acronym “OSU”, which was identical to Oregon State University and Oklahoma State University. To avoid confusion, Ohio State University rebranded itself as The Ohio State University. Due to the humorous nature of the rebranding, The Ohio State University began being referred to as “THE” including on official merchandise t-shirts.
The Ohio State University’s trademark protection for the “THE” mark was not an easy feat — it took three years. On August 8, 2019, The Ohio State University filed a trademark application for the “THE” mark with the USPTO. However, the USPTO initially rejected the trademark application for two reasons. First, the USPTO argued that the “THE” mark was not functioning as a trademark because it was used by The Ohio State University ornamentally on clothing rather than as a source indicator. Second, the USPTO highlighted a potential refusal on likelihood of confusion because Marc Jacobs filed a trademark application for an identical “THE” mark on clothing items earlier than The Ohio State University. A full breakdown of these refusals and the corresponding responses can be read in the IPilogue article “Agreement Reached in THE Trademark Battle” by Claire Wortsman.
While The Ohio State University secured a trademark win, there is now a concern about enforcing trademark rights over such a common term. In theory, the trademark protection does not grant broad enforcement over the term ‘the’. Instead, the trademark protection is narrowed to unauthorized uses of the mark that confuse consumers of source. Further, the trademark protection exists with other trademarks that include the term ‘the’. Therefore, The Ohio State cannot prevent the use of ‘the’ in regular speech and other trademarks including those in the collegiate clothing market like “THE PENNSYLVANIA STATE UNIVERSITY”.
On the other hand, trademark bullying is a widespread tactic to enforce and maintain trademark rights. The USPTO defined trademark bullying as the practice of using trademark rights to intimidate businesses beyond what trademark protection allows. While trademark enforcement is necessary to avoid a weakening of the mark, there is a fine line between suitability and aggression. For example, trademark professor Alexandra J. Roberts highlighted the drink company Monster’s tendency to stop any use of the word “monster.” Therefore, The Ohio State University could aggressively and overbroadly target uses of the term “THE”.
Moving forward it will be interesting to see how The Ohio State University enforces their trademark rights. Hopefully, the trademark registration marks the “THE” end.
