Did Ohio State University REALLY trademark the word 'THE'? Confusion over what it actually entails
The Ohio State University (OSU) has finally won a nearly three-year battle to get trademark protection for the three-letter article, ‘The,’ that they claim plays a crucial role in school identity. The announcement came on June 21 after the US Patent and Trademark Office approved the university's application for a trademark of the word that contributes about $12.5 million in annual sales and much more in emotional capital to students, alumni and fans, as per Ben Johnson, OSU's senior director of media and public relations.
As per NBC, in a statement made on Wednesday, June 22, the senior director said, “'The' has been a rallying cry in the Ohio State community for many years, and Buckeye fans who purchase official Ohio State gear support student scholarships, libraries and other university initiatives.” He further stated that the university registered the word as a trademark to protect its brand.
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What does the trademark document say?
The document, obtained by local news channel WCMH, is registered under Class 25 and allows the school to use 'The' on clothing, namely, T-shirts, baseball caps, and hats, promoted, distributed, and sold through sports and college athletics. According to it, 'the' mark consists of standard characters without claim to any particular font style, size, or color.
The three-year trademark battle
Ohio State, which was founded in 1870 as the Ohio Agricultural and Mechanical College and changed its name to The Ohio State University in 1878, originally filed to trademark 'The' in 2019 but the application was rejected. In a thread on Twitter, trademark attorney Josh Gerben explained the reasons behind the rejection and the process that took three years. He stated that fashion retailer Marc Jacobs had also applied for a trademark. In the end, they reached a deal that allows both parties to use ‘The’ in branding.
The Ohio State University has successfully registered a trademark for "THE."— Josh Gerben (@JoshGerben) June 22, 2022
The registration was just issued on June 21st by the USPTO.
The application was filed back in August 2019. So why did it take 3 years to get approved?
A thread🧵 pic.twitter.com/Wfa5EFp4DS
The USPTO refused Ohio State's trademark application for the word "THE" on Sept 11, 2019, for two reasons:— Josh Gerben (@JoshGerben) June 22, 2022
1. The trademark was "merely ornamental."
2. The clothing company Marc Jacobs had filed an application for "THE" several months earlier.https://t.co/DMFucJllUK
Ohio State responded by:— Josh Gerben (@JoshGerben) June 22, 2022
1. Showing the USPTO that it was not using the trademark in a mearly ornamental manner, and
2. Opposing Marc Jacobs' trademark application for the word "THE."https://t.co/2EDVEbIkhK
Ohio State and Marc Jacobs settled their dispute.— Josh Gerben (@JoshGerben) June 22, 2022
While the terms of the settlement agreement were not disclosed, USPTO records indicate that Ohio State and Marc Jacobs agreed that they could BOTH own a registration for the word "THE." https://t.co/KRwXKKOY0g
After the settlement agreement was reached with Marc Jacobs in August 2021, it took until yesterday (June 21, 2022) for Ohio State to continue to clean up the "merely ornamental" issue with the USPTO and go through the rest of the application process.— Josh Gerben (@JoshGerben) June 22, 2022
In a conversation with Business Insider, he said, "So here, Ohio State has tried to register the trademark for the word 'THE' as it relates to a clothing brand — and ultimately that is what they have registered here." He added that the rights the school has from the trademark in the clothing space are limited and could only be enforced in a narrow context. "Federal registration, if the mark is highly unique, would theoretically allow Ohio State to be the only brand that uses the word 'THE' in the clothing space," Gerben said.
According to Gerben, there are many other trademarks already registered in the clothing space that use the word 'The.' An example of violating the trademark, he says, would be if someone starts making shirts with the Ohio State colors and tries to sell them using the word 'THE.'