Hi, and welcome back to Legal Geek. This week, we cover an interesting bit of trademark news stemming from the alma mater of your truly, as The Ohio State University applies for a federal trademark on the word "the."
Based on a declaration by the State of Ohio about 100 years ago, the formal name of the university in Columbus home to Buckeyes is The Ohio State University. This has been marketed heavily by the university over the past 20-25 years and is something of a point of pride for the students, alumni, and university personnel. While that in and of itself is pretty silly, this branding push has now extended to a controversial trademark application filed 2 weeks ago by OSU.
The application seeks to cover the word mark "The" in association with apparel. This would cover any use of that word on apparel as a source identifier, as the application is not limited to just apparel associated with the university or its colors, nor is the application limited to a particular logo or graphic version of "The." As the definite article "The" is the most commonly-used word in the English language, this application for trademark has been lampooned by many news outlets and legal scholars. But does this application have a chance to succeed?
The short answer is: probably not. That being said, this application is not as much of an overreach as some have played it to be, even coming from one of the most litigious university branding departments in the country.
The application will need to overcome some hurdles in examination before becoming an enforceable trademark registration. First, the university may have to distinguish from the many prior trademarks in apparel that use "The" as part of the mark. If any such prior mark is confusingly similar, OSU's registration may be blocked. Even if such a challenge is not made by the Trademark Office Examiner, third parties can oppose this application if it gets initially allowed to protect their own rights in the word "The." Oppositions can be difficult to overcome and are expensive, since they are basically mini litigations over who properly owns exclusive rights to a brand or mark.
Another hurdle is that OSU has only shown use on the front of a T-shirt as evidence in their application, but this is ornamental use rather than use as a brand. OSU can likely overcome this issue by supplying new specimens showing "The" in use on tags and the like, but it's a sloppy mistake on the initial record of the application file that will need to be addressed.
Finally, trademarks cannot cover so-called generic and merely descriptive terms, as trademarks cannot be used to lock up words needed for others to fairly describe their goods and services. With this word "The" being so common, it is unclear whether such a word mark can be distinctive enough to serve as a trademark in the consumer's mind. If there's any chance of such a word overcoming this requirement, however, OSU and this long-term marketing of The associated with the university probably can provide proof of secondary meaning associating the term with the university as the source of goods. But even then, the strength of such marks is inherently limited.
Again, this is not as big an overreach as the media is playing it out to be, as even a registered trademark would not allow OSU to block descriptive uses of this term in the apparel field that are not leading to consumer confusion. It would be an uphill battle to challenge any competing use, which means the trademark is pragmatically of little commercial value other than as a potential deterrent.
The Bottom Line is: alumni of The Ohio State University will continue to be proud of our little definite article, but that and the associated branding efforts of the university will probably not result in a federal trademark registration on just this word "The." A more narrowly tailored application may come in the future which will have a better chance of success, but for now, OSU is just going to have to keep taking all the PR hits brought on by such a bold legal filing strategy. And I'd be remiss to end this segment without a quick Go Bucks for the upcoming college football season.
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