“University Hall IMG_4991”by OZinOH is licensed under CC BY-NC 2.0
Mike Chernoff, Associate Member, University of Cincinnati Law Review
I. Introduction
Words, symbols, or phrases that are used to identify products and distinguish products from others can receive trademark protection in the United States.[1] Recently, The Ohio State University filed a trademark application for the word “THE” on various items of clothing and was subsequently denied trademark registration by the United States Patent and Trademark Office.[2] Part II will provide further background information on trademark law in the United States. Part III will discuss the history of the name of The Ohio State University, the source of the “THE” in the trademark application. This application and its recent events will be discussed in Part IV. Part V will discuss the possibilities for the outcomes for The Ohio State University’s trademark application.
II. United States Trademark Law Background
A trademark is a word, symbol, or phrase that is used to identify an entity’s products and to distinguish these products from another entity.[3] Marks are grouped into four different categories to assist in determining whether a mark distinguishes one product from another: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic.[4] An arbitrary or fanciful mark is one where the mark bears no logical relationship to the underlying product.[5] A suggestive mark suggests a characteristic of the underlying product.[6] Arbitrary and suggestive marks afford the highest levels of protection of a trademark.[7] Descriptive marks describe a characteristic of a mark.[8] In order for a descriptive mark to receive trademark protection, the mark must acquire secondary meaning.[9] A mark has a secondary meaning when the public associates the mark with the producer, rather than the underlying product.[10] A generic mark refers to the category of the underlying the product and is offered no trademark protection.[11]
Further, to receive trademark protection, the mark must be more than a mere ornamental design.[12] In order to gain this protection, the design of the mark must acquire distinctiveness that would cause the public to view the mark as distinctively belonging to the mark holder.[13] The size, location, and dominance of the mark on goods are facts in determining whether the mark is ornamental or a mark of the brand.[14] On clothing, small marks may be recognized as trademarks by consumers whereas large designs may not be recognized by consumers as trademarks.[15] A portion of a mark may be registered as a trademark only “if that portion presents a separate and distinct commercial impression.”[16]
Once a mark has been used in commerce, that mark is then protected by trademark law.[17] However, registering a trademark provides additional protections for the holder of the trademark.[18] In order to register a trademark, the mark holder must submit an application for trademark protection to the United States Patent and Trademark Office (“USPTO”).[19] The USPTO may reject an application for a number of reasons, including failure to distinguish one’s product from others in commerce or a previously filed application for the same mark.[20]
III. History of The Ohio State University
The Ohio State University (“the University”) was founded in 1870 as a land-grant institution named the Ohio Agricultural and Mechanical College.[21] This name was due to the location of the school within a farming community.[22] However, the name was changed to “The Ohio State University” in 1878.[23] Those in favor of the name change supposed the original name of the University was too narrow in scope, and that the narrow naming was inadequate for the only land-grant university in Ohio.[24] The University’s first president, Edward Orton, believed the name change would separate the University from the other colleges in Ohio.[25] Legends have said that the University included “The” in the official name to show other colleges that the University was intended to be the leader of the state in both size and funding.[26] Other stories state that the “The” is an acronym for “Tradition, Honor, Excellence.”[27] However, there is no historical basis for this explanation of the article adjective.[28]
In 1977, the University began using a logo that identified the school as “OSU.”[29] However, this logo allowed room for confusion, as “OSU” could refer also refer to Oklahoma State University or Oregon State University.[30] In response to these concerns, the University began using a new logo in 1986 that moved away from the “OSU” branding and began referring to the University as “The Ohio State University.”[31] A motivation for this symbol change was to “reflect the national stature of the institution.”[32]
IV. The University’s Trademark Application
On August 8, 2019, the University filed a trademark application for the mark “THE” in reference to the “The” in the “The Ohio State Unviersity.”[33] This mark was designed to be placed on clothing—specifically t-shirts, baseball caps, and hats.[34] The application appeared to concern an arbitrary mark, as the word “THE” does not directly relate to the types of clothing suggested in the application. The University claimed to have been using this mark since August 2005.[35] To support the University’s application for trademark protection, the University included screenshots from the University’s official online athletic shop which showed various clothing items adorned with “THE” in bold text on the front of the clothing items.[36]
The USPTO responded to the University’s application on September 11, 2019, identifying two issues with the application: (1) a previously filed application; and (2) a failure to function as a mark.[37] The USPTO referenced a trademark application that had been filed by Marc Jacobs Trademarks, L.L.C. (“Marc Jacobs”) seeking protection for “THE” as a mark on a wide range of clothing and accessory items including backpacks, handbags, underwear, and socks.[38] If the Marc Jacobs application were to be approved and become registered, then there would be a likelihood of confusion between the two marks, according to the USPTO.[39] Marc Jacobs sought to use the mark for a line of products, such as “THE BACKPACK MARC JACOBS” and “THE VELVETEEN JEAN JACKET MARC JACOBS.”[40] However, the Marc Jacobs application had an issue in that it sought to trademark only a portion of the mark on the products, according to the USPTO.[41] Also, the USPTO alleged that the Marc Jacobs application failed to distinguish the Marc Jacobs products from others.[42]
The second issue the USPTO identified in the University’s application was that “THE” failed to function as a mark because the manner in which “THE” is displayed on the clothing items is merely ornamental.[43] “THE” is across the upper center area of the submitted t-shirt example and across the front of the submitted hat example, both of which are common locations for ornamental designs on clothing.[44] The USPTO suggested that consumers would view “THE” as purely ornamental rather than a trademark to identify the source of the goods and to distinguish the goods from others.[45]
V. Discussion
While the University received a negative result on the initial application to the USPTO, there is still a possibility that the trademark for “THE” will be granted. This will depend upon the outcome of the Marc Jacobs application and any subsequent amendments to the University’s application. If the Marc Jacobs application is granted a trademark, then Marc Jacobs will have priority for the trademark of “THE” over the University. In order for Marc Jacobs to obtain this trademark, Marc Jacobs must convince the USPTO that “THE” is the entirety of the branding of this line of products and that using “THE” distinguishes these Marc Jacobs products from competitors. Alternatively, Marc Jacobs may convince the USPTO that “THE” produces a separate and distinct commercial impression from the rest of the mark.
If Marc Jacobs fails to convince the USPTO that its mark satisfies the requirements for trademark, then the University may have the opportunity to trademark “THE.” If the University has this opportunity, then the university will need to prove that “THE” is a mark and not merely an ornamental portion of design. This can be done by showing examples of times where “THE” was used strictly as a way to show branding for the University, such as a small logo on a shirt used to identify the source of the shirt. Without examples of this, the University’s application will not be able to pass the ornamental design test and will not be able to receive registered trademark status.
VI. Conclusion
Although there is still a possibility The Ohio State University is able to register a trademark for its first article adjective, there are still many obstacles before this could become a reality. The USPTO will have to determine whether “THE” distinguishes clothing from The Ohio State University from other brands’ clothing.
[1]15 U.S.C. § 1127 (2019).
[2]U.S. Trademark Application Serial No. 88571984 (filed Aug. 8, 2019); Non-Final Office Action, U.S. Trademark Application Serial No. 88571984 (sent Sep. 11, 2019).
[3]15 U.S.C. § 1127 (2019).
[4]Abercrombie & Fitch Co. v. Hunting World, Inc. 537 F.2d 4, 9 (2nd Cir. 1976).
[5]Id. at 11.
[6]Id. at 10.
[7]Id. at 11.
[8]Id. at 10.
[9]Id.
[10]Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 790 (5th Cir. 1983).
[11]Abercrombie & Fitch Co., 537 F.2d at 9.
[12]In re Lululemon Athletica Can. Inc., 105 U.S.P.Q.2d (BNA) 1684, 1686 (T.T.A.B. 2013).
[13]Id.
[14]In re Pro-Line Corp., 28 U.S.P.Q.2d 1141, 1142 (T.T.A.B. 1993).
[15]Id.
[16]In re Lorillard Licensing Co., 99 U.S.P.Q.2d 1312, 1316 (T.T.A.B. 2011) (citing In re 1175854 Ontario Ltd., 81 U.S.P.Q.2d 1446, 1448 (T.T.A.B. 2006)).
[17]15 U.S.C. § 1127 (2019).
[18]See, e.g.,15 U.S.C.§ 1065 (2019); 15 U.S.C. § 1072 (2019); 15 U.S.C. § 1121 (2019).
[19]15 U.S.C. § 1051 (2019).
[20]15 U.S.C. § 1052 (2019).
[21]The Ohio State University eHistory, The Ohio State University, https://ehistory.osu.edu/topics/ohio-state-university [https://perma.cc/X6LQ-EJ6A].
[22]Id.
[23]The Ohio State University – University Libraries, FAQs, https://library.osu.edu/archives/faq [https://perma.cc/WTG6-CY8A].
[24]Id.
[25]Id.; The Ohio State University Office of the President, Past Presidents, https://president.osu.edu/presidents/ [https://perma.cc/VQ99-WRQT].
[26]The Ohio State University – University Libraries, supra note 23.
[27]Kelsey Tschanen, THE Ohio State University?, Buckeyes Blog (Nov. 3, 2015), https://undergrad.osu.edu/buckeyes_blog/?p=19519 [https://perma.cc/WU8F-MMB3].
[28]Id.
[29]The Ohio State University – University Libraries, supra note 23.
[30]Id.
[31]Id.
[32]Id.
[33]U.S. Trademark Application Serial No. 88571984, supra note 2.
[34]Id.
[35]Id.
[36]Id.
[37]Non-Final Office Action, supra note 2.
[38]Id.; U.S. Trademark Application Serial No. 88416806 (filed May 6, 2019).
[39]Non-Final Office Action, supra note 2.
[40]Non-Final Office Action, U.S. Trademark Application Serial No. 88416806 (sent Aug. 28, 2019).
[41]Id.
[42]Id.
[43]Non-Final Office Action, supra note 2.
[44]Id.
[45]Id.
