Why OSU Could Not Get a Trademark for THE

As college football fans welcomed back the return of another season, there has been much to celebrate. The time-honored traditions of Saturdays spent tailgating or cheering in front of the television give us all something to get excited for. But one group of Buckeye fans got some bad news near the start of the season. Trademark attorneys for The Ohio State University received a final rejection for their trademark application for THE.

Fans of college football are likely aware of The Ohio State’s insistence in including the word “The” when referring to their university. I feel for the non-initiated who refers to the institution as merely “Ohio State University” when in the company of a diehard OSU fan. Surely the OSU fan must reply with a righteous and lusty “THE Ohio State University.” I admit the intricacies of why this matters so much to OSU fans is lost on me, but who am I to judge? We must simply accept that college football fans live by their own set of rules and move on.

Whether rational or not, OSU is determined to be recognized as THE Ohio State University and filed a trademark application for the work THE. While recognition as THE Ohio State University is surely possible, registration of the word THE alone seemed destined to fail from the start. I can imagine trademark attorneys throughout the country watching OSU submit the original application for THE to the United States Patent and Trademark Office (USPTO) while thinking, “this will never work!” Lo and behold, two years after initial filing the application, OSU is now facing a final rejection on that application. Sunday morning quarterbacking the USPTO’s rejection is easy. The application was never going to be successful because OSU simply doesn’t use THE as a trademark.

Trademarks – From Application to Registration

In order to get a trademark application to registration, the applicant must submit a specimen showing that the mark is used in commerce. There are two components to this proof. First, it must show the mark that is applied for. Second, it must show that the way the mark is used functions to identify the source of the goods. OSU failed on both counts.

The function of a trademark is to put consumers on notice as to the source of the goods or services associated with the mark. When we purchase something associated with a particular brand, we have an expectation of the quality of the goods we are purchasing. We know that when we stay at the Waldorf Astoria we will have a different experience than when we check-in to the Motel 8. Only when words or logos serve to tell the consumer something about the source of the goods do the words serve a trademark purpose. In terms of OSU, they were unable to demonstrate to the USPTO that THE was ever used to identify the sources of the goods associated with the mark.

The specimen submitted to the USPTO in support of registration was a T-shirt with THE written in large letters across the front. As the USPTO correctly pointed out, this appearance of THE on the shirt is simply ornamental and does not rise to the level of a trademark use of the term. This makes sense, when you see a shirt with a smiley face emblazoned on the front of it, you do not associate that smiley face with a brand standing behind the quality of the shirt you bought. Of course, if the logo is smaller and placed on one side of the chest of the shirt, it could serve as a source identifier (think about the little crocodiles on Lacoste apparel). Similarly, when a name appears on the tag of a shirt, this usually functions as a trademark. You probably have many items of clothing that have the brand name affixed somewhere on the clothing and even if you are not familiar with the brand, you know it is a brand name due to where it is placed on the clothing.

The Rejection, Response and Result

In response to the USPTO’s first rejection of the application, OSU provided evidence that THE OHIO STATE UNIVERSITY was used as a trademark, and that is quite likely true. The problem is that THE OHIO STATE UNIVERSITY was not the mark sought to be registered, THE was the mark seeking registration. The specimen of use submitted to the USPTO must show the mark to be registered. Providing a specimen showing THE OHIO STATE UNIVERSITY while seeking to register THE is not legally sufficient.

It is unclear to me why exactly OSU wants to register THE when they are unable to show they have used that term as a trademark. Registration of a mark prevents others from using that mark with the same or related goods or services associated with the registration. Therefore, a successful registration for THE would prevent others from using THE in some cases. While this is pure speculation, perhaps OSU is seeking registration because they would like to be the only university to have THE included in its name. If this is the case, they misunderstand the purpose of trademark law. Obtaining trademark protection for a term does not remove it from the English language or prevent others from using the term. Trademark registration simply prevents others from using that term as a source identifier for certain goods and services.

A registration for THE does not necessarily prevent others from using THE in its brand name. Even if OSU were granted a registration for THE, another university, let’s call it THE STATE UNIVERSITY, could obtain trademark protection for its name, including THE, so long as the consumer is not confused into believing OSU provides the goods sold by THE STATE UNIVERSITY.

When applying for a trademark registration, it is important to understand the benefits, limitations, and technical requirements of trademark law. A clear understanding of these can facilitate an efficient application process and ensure a company’s use of a mark is consistent with trademark laws.

If you have any questions about the USPTO decision and trademark registrations or need assistance with a trademark or other intellectual property matter, please contact me.