Do I Owe Money to Ohio State Every Time I Use the Word “THE”?

The title of this article is a text I got after The Ohio State University successfully registered “The” as a trademark with the USPTO. That got us thinking about how reporting on this registration got so much attention and created so much confusion. Here’s our breakdown of what it all means.

What is a Trademark?

A trademark or a service mark is a word, phrase, symbol or design that identifies the source of goods or services. When applying for the “THE” mark in 2019, The Ohio State University originally submitted a shirt with the word “THE” and the school’s logo prominently displayed across the chest as its specimen..

The Trademark Office found that the specimen did not show the use of the word “THE” as establishing a source of goods, but was merely an ornamental design. A design on a T-shirt is not normally protected as a trademark. Instead, what is protectable is the brand itself. The Ohio State University then offered a second specimen that included “THE” not in the design of the shirt, but on the tag. Generally, the Trademark Office considers brands on tags as evidence that consumers associate the mark with a single source of goods.

What Rights Exist in a Trademark?

A trademark gives the owner the right to exclude others from using a confusingly similar mark to sell similar goods or services. Largely, trademarks are meant to protect against consumer confusion. That limited right is why there is no problem with both Yale University and Yale Locks coexisting. There is a low likelihood of consumer confusion, and the goods and services offered by the two entities are very different.

The Ohio State University registered its mark for clothing, namely T-shirts and hats sold through normal sports and collegiate athletic channels. That means even when “THE” is used as a mark, The Ohio State only has the right to exclude others from using “THE” in a way in which consumers will be confused that clothing being sold is official athletic merchandise of The Ohio State University. It never entitles Ohio State to any royalties or payments for other uses of the word “the.” 

Other universities will also still be able to use the word “THE” on athletic clothing. There would be almost no chance of consumer confusion between the registered “THE” and a green shirt with an orange and white “THE U” on it. Overall, the rights The Ohio State University has are very narrow.

There may eventually be additional rights to prevent others from using similar marks in a way that dilutes especially famous brands, but federal dilution claims are rare and only apply to the biggest brands. Today, this “THE” mark would probably not qualify for that protection.

What is a Registration?

A federal trademark registration puts others on notice of your brand. A registration creates a legal presumption that the registrant owns the mark. It creates the right to use the ® symbol with the mark. It also creates notice that generally provides nationwide protection. Usually registration prevents others from registering confusing marks, as the office’s examiners will search for confusing marks even before an opposition has to be filed. Registration also always gives the owner the ability to file lawsuits in federal court.

Is Registration Required?

No. Trademarks do not have to be registered in order to be protectable. Common law rights are established by using a trademark in commerce and can be enforced without registration.

Why Bother to Register “The”?

Other big sports programs, such as Oregon State University and Oklahoma State University, are also known as OSU. In the late 1980s, in order to distinguish itself, the athletic department engaged in a light-hearted rebrand from OSU to The Ohio State University. By the mid-90s, that rebrand had come to prominence, with professional athletes routinely referring to their alma mater as The Ohio State University. On Monday Night Football, former OSU players would greatly emphasize the “The” in The Ohio State University.

By leaning into this branding, The Ohio State University has set itself apart from most other big sports programs, especially those other OSU schools. It also creates a stronger connection in the minds of consumers between The Ohio State University and those players emphasizing the “The” on pregame shows. Plus, here you are reading about the “The.” That’s good publicity. 

What About Marc Jacobs use of “The”?

One hurdle that The Ohio State University had to overcome to obtain a registration was that Marc Jacobs was also seeking to register “The” for use on clothing. Marc Jacobs originally opposed the OSU registration. Eventually, the parties settled. The terms of the settlement are confidential. What we do know is that Marc Jacobs no longer opposes the registration.

We can also surmise that it is possible for both these brands to coexist while using the “THE” mark. Marc Jacobs sells aspirational fashion clothing and accessories, often with a tongue-in-cheek vibe. Similar to the manner in which Off-White put labels on different components of some of its clothing, Marc Jacobs had previously marketed a relatively plain “The Tote Bag” and “The Backpack.” Because expensive fashion tote bags and backpacks are unlikely to be confused with The Ohio State University athletic apparel, the two brands do not overlap and should not infringe each other.

Why are Trademarks Important?

Trademarks protect a company’s goodwill. Trademarks tell customers that the goods or services they are going to receive are of a certain quality. For many businesses, trademarks are their most valuable piece of property. If you have any questions about trademarks, contact Andrew Coffman, Ashley Heilprin, or the rest of the Phelps Intellectual Property Team.