Posted on 8/19/2019 7:30:00 AM By Daniel L. Rogna

With college football season kicking off in just a few days, one school is trying to secure a W off the field.  Ohio State University – excuse me, THE Ohio State University (“OSU”) – recently filed an application to register the trademark THE (ser. no. 88/571,984) for use in connection with “clothing, namely, t-shirts, baseball caps and hats.” That play has many Monday morning quarterbacks calling a foul.
 
Although the filing was roundly critiqued in sports media, registration of THE is not without precedent.  Several active U.S. registrations exist for THE, but these seem to be acronyms (see, e.g., reg. no. 1,783,218), initials (see, e.g., reg. no. 2,797,308), with a design (see, e.g., reg. no. 4,425,583), or the word “thé” (see, e.g., reg. no. 1,384,903). 

Is registration of THE, used as an article, allowable or is OSU offsides with this filing?
 
A recent application may indicate that the OSU application is viable.  A Marc Jacobs application for THE (ser. no. 88/416,806), for use in connection with handbags and clothing items, was initially determined to be sufficiently distinctive for registration on the principal register. After submitting specimens of use showing THE used on a backpack (“The Backpack Marc Jacobs”) and jacket (“The Velvet Jean Jacket Marc Jacobs”), the application was approved for publication. Notably, however, since the approval on July 24, 2019, the application has been withdrawn by the USPTO “for further review.”
 
The question for OSU seems to be whether THE is sufficiently distinctive to function as an indicator of source. A trademark can be distinctive if, in relation to the goods or services with which it is used, the term is fanciful, arbitrary, or suggestive; that is, there is no immediate connection between the term and the products. Alternatively, if the trademark is merely descriptive of the goods or services, it may acquire distinctiveness, meaning it acquires significance to consumers that relate the products with the particular manufacturer. 
 
“THE” conceivably could be deemed inherently distinctive. Arguably, “THE” alone doesn’t tell the consumer anything about the goods or services. But “THE” is a definite article, and it functions as the most basic descriptor of a thing. 
 
However, even if “THE” is merely descriptive of the clothing products, OSU may have an argument that the mark has acquired distinctiveness, given the long period of time during which the school, its alumni and ambassadors have emphasized “THE” when referencing the institution. Whether that is sufficient evidence to support a conclusion that THE has acquired distinctiveness as an indicator of source for OSU’s clothing items is far from certain.
 
Even if OSU can prove that THE has acquired distinctiveness, it seems likely that third parties can make fair use of “the” when describing their competing products. The term “the” is so ubiquitous in the English language that OSU’s rights in THE likely would be exceedingly narrow, if registration was achieved; and OSU’s ability to enforce those rights may be impractical.
 
That said, OSU seems to have a path to victory, even if it’s against the odds. And who doesn’t love an underdog story?
 
Interested in securing your own long-shot trademark registration? Send us an email and we’ll be happy to discuss THE strategy.


Full disclosure: I am a University of Michigan grad. I’ve attempted to be impartial here, but if there is any bias in the article, please accept my apology on behalf of all of us rooting for The Team Up North.
 
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