Much to the chagrin of its Big Ten rivals, after over three years, the Ohio State University (OSU) has received a trademark registration for THE in connection with clothing, namely T-shirts, baseball caps and hats; all of these being promoted, distributed and sold through channels customary to the field of sports and collegiate athletics in IC025. This marks an end to OSU’s years-long back and forth with the USPTO, as well as an opposition against Marc Jacobs.
As iterated in the initial Non-final Office Action dated Sept. 11, 2019, and reiterated in the most recent Final Office Action dated Aug. 9, 2021, the USPTO’s examining attorney determined OSU’s mark to be merely ornamental. Namely, the examining attorney found that the applied-for mark, as used on the filed specimen, was merely a “decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others”. Specifically, the filed specimen consisted of a T-shirt and hat, each bearing THE in large type on the front, sides, and locations which the examining attorney determined are “where ornamental elements often appear” as compared to a smaller, more discrete mark that may be featured on a pocket and that consumers may be more likely to view as a trademark.
In response, OSU argued that its use of the mark is not merely ornamental and is entitled to federal trademark protection as THE is an indicator of secondary source and sponsorship. OSU also submitted a substitute specimen indicating THE on a label inside of a T-shirt, resulting in the USPTO publishing the mark for opposition.
Simultaneously, OSU sought an opposition against the fashion brand Marc Jacobs for the word THE for use on clothing and various types of bags. Like OSU, Marc Jacobs faced similar ‘merely ornamental’ rejections, but following a final rejection, Marc Jacobs successfully filed a request for reconsideration, leading to the Marc Jacobs application publishing for opposition.
When the Marc Jacobs application was published, OSU initiated an opposition proceeding, arguing that OSU has consistently used THE as a trademark on athletic merchandise since at least 2005, more than a decade before Marc Jacobs began to use the mark in connection with its offerings. However, the opposition did not last long, with OSU withdrawing its opposition following each party’s amendment to its respective application. The parties apparently decided that they can peacefully co-exist in the collegiate sports merchandise and contemporary fashion spheres without confusing consumers.
Without knowing the exact terms of OSU and Marc Jacobs’ co-existence agreement, it can only be speculated what other classes OSU may pursue. But, given the vast breadth of collegiate merchandise OSU currently trades in, it is hard to see OSU stopping at just this sole registration. If simply adding the mark THE to a hangtag or label on a product is enough to get beyond a merely ornamental rejection, it would be easy to see OSU filing dozens of applications across numerous classes for THE and seeing tremendous increases in its licensing and trademark program, which already generates over $12.5 million annually.
This article originally appeared in World Trademark Review Weekly on July 14, 2022, and is reprinted with permission.