September 05, 2019

The Trouble with THE

You may have heard by now that a certain Midwestern university that gets a lot of attention in this blog has filed an application to register the word THE as a trademark.

If the intent was to get press coverage, mission accomplished. The application was widely reported, and generally not in tones of admiration for the university’s cleverness and foresight in protecting its valuable intellectual property. Many reported on the application with an air of stunned disbelief. Others offered their opinions about the matter, with headlines like these:

Opinion: Ohio State has market cornered on THE dumbest ideas (USA Today)

THE Ohio State University Applies For THE Stupidest Trademark In THE World (Techdirt)

Ohio State’s ludicrous application to trademark the word ‘the’ (The Philadelphia Inquirer)

But is it really so stupid?

The Philadelphia Inquirer’s “The Angry Grammarian” was upset, possibly because he doesn’t understand how trademark registrations work. He writes: “If the school is successful, the rest of us can’t use the without the Buckeyes’ permission, and you’re left reading Angry Grammarian in Philadelphia Inquirer.” Not exactly. (Reading further into his column, we learn that even he doesn’t believe that.)

A trademark is an indicator of the source of a product or service, and if a word functions in that way, it can be registered. It doesn’t mean the rest of us have to stop using that word – we just can’t use it as a trademark in connection with the products or services for which it serves that source-indicating function.

But that isn’t very clear, is it? An example: there is a certain company that brands its products with the name of a common fruit. APPLE is distinctive as a trademark for computers and phones, and Apple Inc. has registered it. You are still free to use the word to designate a type of fruit. You are free to use APPLE in a trademark provided it is not likely to create confusion – Mattel has registered APPLES TO APPLES for card games. You are not free to sell computers branded as APPLE. If Ohio State can make THE a brand the way Apple has made APPLE a brand, it is entitled to register THE as a trademark.

Arguably – and this may well be argued somewhere down the road – the Ohio State University has a special connection with the word “the.” It famously bills itself as “The Ohio State University” rather than just “Ohio State University.” Apparently this is a point of pride for people associated with the university, and it is a source of bemusement, and sometimes ridicule, for people not associated with the university. But if you were to ask people what university they associated with an emphasis on the word “the” in the university’s name, I suspect that OSU would get quite a few more responses than any other.

So it’s not completely crazy that OSU might think that it could use THE as a trademark – that when we saw the THE brand, we would know it was associated with The Ohio State University. As a word that has no descriptive significance with respect to the goods or services with which it is used, the word would normally be considered “inherently distinctive” and entitled to registration upon proof that it is in fact being used as a mark.

Whether OSU (and shouldn’t it be TOSU?) will succeed in registering the mark remains to be seen. In order to obtain a registration, you have to show evidence that you are using the claimed mark as a mark. It’s far from clear that the specimens of use that OSU has submitted will accomplish that to the satisfaction of the Patent and Trademark Office. It is not uncommon for an application to be refused registration on the ground that the claimed mark is being used in an ornamental fashion, or that it fails to function as a mark. In other words, consumers are likely to see it as decoration or expression rather than as a brand. For example, the PTO refused an application to register the NO MORE RINOS! mark based on the specimen below (along with a sign and a bumper sticker) that, the PTO concluded, looked like expressive use rather than trademark use:

The LAGUNA SURF AND SPORT mark was refused as merely ornamental based on this specimen, on the theory that consumers would see the claimed mark as a decorative feature of the shirt rather than a brand of shirt:

The refusals make sense, particularly when the supposed mark is used on t-shirts and the like, which often have expressive content on them. The wearer can announce his or her viewpoint by wearing a shirt or cap that expresses that viewpoint. So the PTO is right to look carefully at supposed marks that are only used on the front of a shirt or cap. OSU’s application covers use of the mark with “T-shirts, baseball caps and hats.”

So what do OSU’s specimens in its application to register THE look like? Pretty much like the ones above. There is this shirt:

And this cap:

The “ornamental use” issue looks like it might very likely be a problem for this application – particularly if the PTO attorney examining the application is a University of Michigan alum. There would be ways to get around this problem – but I’m sure a university that is so important that its name begins with the word “The” doesn’t need me to suggest how to beat the refusal.