The Legal Brief
"'THE'" Is Now A Trademarked Word?
July 11, 2022
By: Joshua A. Claybourn and C.J. Donegan
On June 21, 2022, The Ohio State University (OSU) added to their $12.5 million-dollar annual trademark and licensing portfolio by officially receiving a registered trademark for the word “THE” from the US Patent and Trademark Office (USPTO). This does not mean every commercial use of the word “THE” must be licensed from OSU. Instead, the trademark is limited to “clothing, namely, t-shirts, baseball caps and hats” that are “promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics.”[1]
OSU’s journey to obtain registration for the mark has been dramatic. The USPTO denied OSU’s initial 2019 application because fashion designer Marc Jacobs had already filed an application for the word. After two years, the organizations reached an amicable agreement where they could both register the “THE” trademark.
Understandably, many laugh at OSU securing trademark rights to one of the English language’s most common words. But this very narrow trademark will likely be utilized to prevent knockoff OSU merchandise and not, for example, the University of Michigan putting “The University of Michigan” on their own merchandise. Big10 Conference reps said this will likely not impact how they utilize school names moving forward. Typically, the Conference has simply used “Ohio State” on their merchandise.[2]
The USPTO defines trademark as “any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.”[3] Trademarks range widely from generic (i.e., aspirin) to fanciful (i.e., Uber), where generic marks are afforded little, if any, protection and fanciful marks are afforded maximum protection. Utilizing a “sliding scale,” some brands start on the fanciful side and become so associated with a product that they become generic (a problem brands like “Kleenex” work hard to avoid). A middle ground exists where arbitrary, suggestive, and descriptive trademarks exist.
Trademarks often consist of adjectives, nouns, or a combination thereof which makes it easier to determine where on the sliding scale a particular mark may fall. Using the singular word “THE,” a definite article, creates a dilemma for placing it on the trademark sliding scale. It certainly is not a made-up fanciful word, nor is it a generic word because it does not identify a particular thing. Presumably, by granting registration for the mark, the USPTO believes OSU’s mark falls somewhere in the middle—likely a suggestive mark, which hints at sports culture’s long mockery of OSU’s over-emphasis of the word in sports broadcast. It remains to be seen if this decision leads to any challenges to the mark and, if so, how a court may interpret OSU’s ability to protect the “THE” mark, even in cases of knockoffs.
[1] THE®. 2022. The Ohio State University, Columbus, Ohio, USA.
[2] https://www.nbcnews.com/news/us-news/ohio-state-university-officially-wins-trademark-word-federal-governmen-rcna34857