The Ohio State University (OSU) has been granted what many in our profession believe to be a silly, unenforceable trademark, having received a federal trademark registration for the word “THE” for various clothing items in the field of sports and college athletics. U.S. Registration Number 6763118 was issued to OSU on June 21, 2022. Does this mean that OSU can now send demand letters to every other clothing manufacturer with the word “THE” in their mark? Not so fast! So, what exactly is the value of the OSU trademark if it is not enforceable?
Background of the OSU trademark THE
As background, and as any OSU fan or alumni will tell you “THE” (pronounced like thee) is an important part of OSU’s name. It seems silly to me, because no one attends “An Ohio State University” and many universities have “the” as part of their official name. Apparently, “the” is engrained as part of OSU’s culture. In fact, as ridiculous as this trademark is, OSU was not the first company to file a trademark for the word “THE.” Six months before the OSU trademark was filed, Marc Jacobs had also filed an application for “THE” in classes 18 and 25 on an intent to use basis.
According to its application, OSU had an earlier date of first use, so it filed a notice of opposition. The opposition received a lot of press in the spring of 2021 which highlighted that two companies were spending a lot of money to argue over a seemingly unprotectable article of speech for articles of clothing. In the end, the two companies settled, and while the settlement is confidential, what we know is that OSU settled for a narrowing of “in the field of sports and college athletics” for their clothing goods, and Marc Jacobs agreed to narrow their clothing (and handbag) goods to the field of contemporary fashion. The only remaining issue for OSU to resolve before their registration could be granted was their ornamental specimen refusal.
How to use the OSU trademark THE on clothing
To properly prove use on clothing, a trademark must be used properly. This does not mean emblazoned across the article of clothing – that is the very definition of ornamental use. It means the brand must appear on the neck tag, on a hang tag, or the clothing packaging must somehow otherwise be labeled with the trademark. To learn more about proper use of trademark with clothing, you can watch our brief video on clothing specimens here. After amending its filing basis to an intent to use basis, OSU submitted a proper specimen where “THE” appears as a brand on the neck tag, pictured below.
Is the OSU trademark valuable?
While I am doubtful that anyone will walk into any store asking for the “THE” brand of collegiate sports apparel any time soon, this is technically proper trademark use of clothing goods. So, the USPTO issued the registration.
What was the point of securing this trademark? OSU has strong brand recognition, so does this legitimize that THE and OSU are tied together? Maybe, but I’m not convinced. Is this the rare instance of securing a trademark registration that may be so weak that it’s not worth much more than the piece of paper it’s written on? Yes, probably. Because it is so unlikely OSU can enforce this mark except against any other party that wants to print THE on any other college sports clothing items. In my opinion, the true value of this mark is in stopping counterfeit goods and for a Big Ten school like OSU that may have been the strategy behind its seeking this registration all along. The media circus was just a distraction and trap that we all fell into to.
There are so many lessons here for trademark attorneys: (1) counseling clients on expectations for when your client is a later filer, but earlier user and the costs associated therewith, (2) overcoming ornamental refusals of registration for clothing, and (3) submitting proper specimens. In the Trademarkabilities® Masterclass, we teach all of this and more! The Trademarkabilities Masterclass is a comprehensive course designed to teach attorneys and paralegals how to confidently practice trademark law at the USPTO. To learn more, check out our website here.
Stacey C. Kalamaras is the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. Stacey started Trademarkabilities to share her passion teaching the law with the next generation of lawyers and help them become practice ready lawyers. Contact us at: firstname.lastname@example.org.
Stacey is also a seasoned trademark attorney and currently works in-house as Senior Counsel for a multi-national candy company. She previously owned her own solo trademark practice, which she scaled and sold. She has been recognized by her peers for her outstanding knowledge and service in intellectual property law.