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“The” is the most common word in the English language, so prevalent that I needed to use it twice to write this sentence. But Ohio State University wants to trademark it, recently filing a federal trademark application for the mark THE in connection with clothing. The application has elicited plenty of news coverage and lots of laughs, but the question remains: is THE really eligible for trademark registration?
Let’s start at the beginning: trademarks include any word, name, symbol, or device, or combinations thereof, that a person uses to (1) identify and distinguish goods and services from those manufactured and sold by others and (2) to indicate the source of the goods and services, even if that source is unknown. I emphasize any to say that “any” truly is any, even terms as de rigueur as the humble “the,” if the proposed mark meets all other prerequisites. The takeaway is that the core function of a trademark is to identify the source of the item that bears it. In this case, the question is, when consumers of clothing see or hear the word “the,” do they connect it with Ohio State University?
At first blush, this is a risible assertion. Some terms simply can’t perform that source-identifying function in the context that a trademark applicant wishes to protect. “The,” a linguistic building block, needs to be available to everyone. Indeed, a laundry list of rules governs whether or not a proposed mark qualifies for protection, largely based around the concept of whether others need have terms available to call things what they are. Before digging into the legalese, it’s hard to argue that a person in daily life would see the word “the” on any hat and immediately think “Ohio State.” But analysis of trademarks doesn’t look at the average person; it looks at the average purchaser of the given product or service named in the trademark applicationi. In its filing, Ohio State is not seeking to reserve THE for all uses, only for “clothing, namely t-shirts, baseball caps and hats.” Ohio State wants to use THE on these specific items and claims that the term will indeed point consumers of these specific items to its university, as the source of those items. But why?
On a daily basis across the U.S., Ohio State may be most known for its football team, long a dominant force in one of the country’s most popular sports. As much as it pains this Northwestern alum to admit, the Buckeyes are really good. OSU has won eight national championships and 37 Big Ten titles, completing 10 undefeated seasons. In 2017, the Wall Street Journal valued the program at $1.5 billion dollars, the highest in the nation. This level of singular football success has led to a self-proclaimed title as not just “an” Ohio State University but, particularly in the world of football, THE Ohio State University. What’s more, the formulation of this term and the phrase is precise and formulaic—it’s pronounced with a long “ee” vowel, rather than a short “uh,” emphasized more than the words “Ohio State” and always, always capped with the term “University.” Look no further than starting lineup announcements in professional football broadcasts, where former Buckeyes often use this phraseology to identify themselves and their school (as at 0:17 in the linked video).
Accordingly, evaluating the registrability of the term THE in connection with Ohio State University must take into account the way that the word is used. Plenty of extrinsic evidence illustrates that the words “Ohio State University” aren’t necessary to identify the school in the right context. Any football fan could tell you, as soon as they hear “thee,” pronounced in that fastidious patois, that we’re talking about Ohio State. That forms the basis of a strong argument that THE succeeds as a source-identifier, as trademarks must.
However, this finding just accepts that THE, in proper context, meets the threshold to serve as a trademark at all. The next question is whether any of the restrictions that prohibit registration of a particular mark may apply. The restriction most likely to arise here is ornamentality.
Purely ornamental marks merely perform a decorative function when placed on goods; they don’t identify the source of the goods themselves. A mark with some ornamentality won’t necessarily be rejected; like other marks, ornamental marks reside on a spectrum. If the mark identifies a source, it can be registrable despite some degree of ornamentality. The U.S. Patent and Trademark Office uses a four-factor test exists to judge whether a mark is an unregistrable, purely ornamental one. The factors are (1) the commercial impression of the proposed mark; (2) the relevant practices of the trade; (3) secondary source, if applicable; and (4) evidence of distinctiveness.
Common expressions are normally not perceived as marks. Their commonness precludes the possibility that they point to a manufacturer/seller of the goods that bear them. On clothing, a smaller design feature is more likely to serve a trademark function than a larger one, which is likely to attract consumers on the basis of its expression rather than its identification of the clothing’s source. This doesn’t favor OSU, because the specimen submitted to illustrate use of the mark in commerce shows a t-shirt with a huge THE above a smaller university athletics logo. However, when evaluating words used on goods, the USPTO reviews whether purchasers will perceive the words as conveying a message rather than indicating the source of the goods. Comparing THE to indicate OSU’s success versus, say, the phrase “I LOVE YOU” on bracelets reveals some daylight; the USPTO rejected the latter mark because it comprised “terms of endearment” rather than indicating a source. THE points to OSU, with a chaser of athletics elitism.
When a mark is an unusual expression of a term within a subject, it is more likely to identify a source of goods. The more unique or unusual in the context of its trade, the more likely a mark will avoid pure ornamentality. Unlike nicknames that many teams share, such as “Bulldogs,” or common geography like “Florida” (e.g., Florida, Florida State, Central Florida, etc.), no other major American college athletics programs refer to themselves as THE as readily Ohio State does. Those that do are often skewering OSU’s self-proclaimed singularity, as the Carolina Panthers did a few years back, rather than claiming the same designation for themselves—further forging a straight line between “THE” and OSU.
Some marks are ornamental in one context but non-ornamental when used in connection with other goods and services. This is particularly relevant to Ohio State’s mark, where the term THE on clothing may be fairly ornamental, but in connection with its football team points directly and uniquely at Ohio State.
Evidence of distinctiveness
Some ornamental marks can acquire distinctiveness over time, making them registrable even if they weren’t at first. This happens with 5 years’ consecutive use, plus additional evidence illustrating consumer awareness that the mark refers to its source. OSU’s application alleges first use in commerce of THE as early as 2005, so it easily clears the 5-year hurdle. OSU also could easily cobble together sufficient media mentions and consumer surveys to illustrate that “THE Ohio State University” has entered the vernacular.
In reviewing these factors, I believe that OSU should expect an initial rejection for ornamentality because of the nature of the specimen submitted, but that it will be able to lodge a successful rejoinder showing that consumers familiar with college football see “the” in that context and identify Ohio State University, such that it could register this mark if properly defined.
Yet problems still persist.
Had OSU’s application named its goods and services as college football exhibitions, i.e., the hosting of sports competitions sponsored by the university, or had it limited its application to clothing sold in a college athletics context, it would have a much stronger case for registration. Its case that “the” points to OSU across all clothing is weaker than it would be to clothing or events tied to college sports. OSU may also want to provide a substitute specimen that shows THE as a less dominant portion of the apparel where it appears, or to re-file a new application for the entire phrase THE OHIO STATE UNIVERSITY, which represents the phrase as it is most often used. After all, even OSU’s specimen shows THE on a t-shirt with the university’s athletics logo, all rendered in OSU’s iconic scarlet and gray. Not only would this more accurately reflect its use of its mark, but it would also allow them to limit their enforcement obligations to the entities from whom OSU may actually need protection—sports-related ones—rather than all clothing businesses.
That enforcement piece may end up being the whole game. Trademark owners have an affirmative obligation to enforce their trademark rights. Failure to police them sufficiently can result in the loss of those rights. This process, known as acquiescence, is a defense to a trademark infringement claim, where a defendant in an infringement claim argues that the trademark owner failed to enforce its rights enough times that it implied consent for others to use the mark again. This presents a gigantic stumbling block for OSU in the current iteration of its application, because the description of goods claims “the” across all clothing. In order to maintain its rights in THE, Ohio State will have to enforce its rights—that is, monitor use, engage in licensing or consent negotiations, send cease-and-desist letters, and ultimately file lawsuits for injunctive relief against infringers—against any clothing manufacturer or seller that employs the word “the.” This will be a major undertaking.
Trademark owners aren’t required to engage in constant, daily enforcement of all possible infringers to maintain their marks. However, Ohio State’s relative fame and resources, along with the pervasiveness of the word “the” in everyday business, suggest that OSU won’t get the benefit of the doubt without consistent, evenhanded enforcement, allowing potential infringers to point to other examples of the word THE appearing on clothing and argue that Ohio State acquiesced to its use.
So, is trademarking THE worth all the trouble, even if possible? I’d argue not. Ohio State doesn’t require a trademark to market and sell its apparel. Copyright and perhaps design patent protection may be available, as is some limited common law trademark right to enjoin non-authorized users from acting as if they are connected to OSU. The enforcement obligations to maintain the mark will be expensive and onerous. Perhaps most importantly, OSU has a huge fanbase, enormous resources, valuable manufacturing and distribution relationships, and a host of other economic and market factors that put it in prime position to profit off the brand it has established in the term “the.” Its 14 years of use of “the” prior to applying for this trademark shows that it operated just fine without a federal registration. To be sure, the application has attracted a lot of attention for Ohio State just ahead of the 2019 college football season, and maybe that’s the whole point.
Perry Gattegno leads the Trademarks and Branding practice at Litwin Law in Chicago and is the co-founder of Derby Fantasy Wins League. He focuses on clearance of trademarks for branding and naming agencies, trademark prosecution for entrepreneurs and businesses, and intellectual property strategy and counseling for all. A recovering journalist, he retains a soft spot for a good story. He likes short sentences and hates legalese.
- i Language that the USPTO often uses to adjudicate disputes on this issue: “[T]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties… the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks.” It has also defined the “average purchaser” as the “least sophisticated of a particular class of consumers;” British judges have referred to the same standard as a “moron in a hurry.”