Will Ohio State succeed in obtaining a trademark in the most commonly used word in the English language?
On August 8th, 2019, Ohio State University filed a trademark application with the U.S. Patent and Trademark Office (PTO) for the grammatical article “THE.” Ohio State, which is officially designated by Ohio state law as “The Ohio State University,” uses “THE” on various clothing and apparel.
Notably, Ohio State’s application does not involve any particular font style, size, or color. A look at Ohio State’s clothing line shows that there is no uniformity in how it uses “THE.” Chris Davey, spokesman for Ohio State, told the Columbus Dispatch that this application was filed in order to “vigorously protect the university’s brand and trademarks.”
Response to this trademark filing has been mixed overall, with some commentators pointing out the absurdity of Ohio State potentially owning a trademark in the most commonly used word in the English language. Others have mocked the filing with humor of their own. Both the University of Michigan and Ohio University have made fun of Ohio State’s trademark efforts on Twitter.
Prominent trademark attorney Josh Gerben tweeted an analysis video where he stated that Ohio State will have trouble succeeding on its trademark registration for “THE.” Specifically, Gerben said that the word “THE” has not been used by Ohio State in a “trademark fashion,” such as in the tagging or the labelling of its products. Without doing so, Gerben argues, Ohio State is likely to have their initial application denied by the PTO, though they will have the chance to fix this issue on appeal.
Another issue that could foil Ohio State’s application is the existence of a competing trademark registration in “THE.” The Washington Post reported that apparel company Marc Jacobs also filed a trademark application for “THE” to use on its bags and clothing. Marc Jacobs filed its registration in May 2019, months before Ohio State’s filing. Since Marc Jacobs filed first, it would have priority over Ohio State.
Ohio State is no stranger to trademark disputes. Ohio State owns trademarks in the names and likenesses of coaches Woody Hayes and Urban Meyer, as well as phrases such as “Script Ohio” and “The Shoe.” In February 2017, Ohio State sought to trademark the acronym “OSU” for use on clothing and apparel. Oklahoma State University, which uses the same acronym, objected to this registration, though the schools eventually reached an agreement on use of the acronym.
Granting trademark registration of the word “THE” poses a number of issues. For one, the owner of the “THE” trademark would have the power to sue other businesses for trademark infringement. If another company were to place “THE” on its own apparel, Ohio State could send a cease and desist letter. Even in cases where Ohio State is unlikely to succeed, such as those where “THE” is combined with other text or elements, Ohio State could still use the threat of litigation as leverage for licensing deals and settlements.
Further, granting Ohio State registration of “THE” could open the floodgates to other companies seeking trademark registration in common words. Such a move could stifle brand creativity, steering people away from using common vernacular in fear that some university or corporation will go after them down the road.
Still, despite the issues surrounding the trademarking of basic words, it appears likely that some entity (either Ohio State or Marc Jacobs) will hold a trademark in “THE.” Considering the common use of such words, the PTO should exercise caution and seek to limit harmful practices like trademark bullying.
Alex Betschen is a graduate of the University at Buffalo School of Law. He was a student attorney at UB’s Civil Liberties and Transparency Clinic, where he worked on cases involving government disclosure of private information and use of hacking tools. He also served as an Editor on the Buffalo Law Review and is an accomplished musician.