U.S. Patent Office Lets Ohio State Trademark The Word “THE”

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Introduction

After a battle that lasted nearly three years, The Ohio State University secured the registration of its trademark “THE” latest on June 21st, 2022. 

Talking about a trademark is an Intellectual Property Right that can be any word, phrase, symbol, design, or combination of these that distinguishes the products or services. The interesting fact about a trademark is that ‘it lasts forever’ which means its owner owns it for a lifetime. However, the registration of a trademark requires renewal after a certain time period. 

Like any other institute, Ohio State seeks to safeguard the university’s brand and trademarks because these assets are beneficial to students and staff and support their primary academic missions of teaching and research. 

The word “THE” is significant for the overall identity of The Ohio State University as it served as the university’s moniker and rallying cry during sports activities for decades. Any product associated with The Ohio State University and made available for purchase through its collegiate and sports channels shall be referred to as “THE” products. The registered application allows The Ohio State University to use the word “The” on “Clothing, namely, T-shirts, baseball caps, and hats; all of the foregoing being promoted, distributed, and sold through channels usual to the field of sports and college athletics”. 

Table of Contents

According to WIPO’s Global Brand Database, there are around 1 million registered trademarks that include the word, “THE” in their brand which can be seen below: 

U.S. Patent Office Lets Ohio State Trademark The Word “THE”

Challenges Faced l barrier crossed 

In an effort to get away from the “OSU” symbol similar to Oregon State University and Oklahoma State University, Ohio State University unveiled a new logo “THE” in 1986 and began using “THE” after its name. The change was made to set it apart from Oregon State University and Oklahoma State University, two other institutions with the same initials. 

However, before filing for the trademark “THE”, The Ohio State University previously faced objections for the trademark “OSU” from Oklahoma State University. This resulted in an agreement between the two institutions allowing them to utilize the word on a national level. 

Initially, Ohio State’s application for the trademark “THE” was denied by the United States of Patents and Trademark Office (USPTO) mainly due to two reasons: 

  1. Ineffectiveness As A Trademark: “THE” was ineffective as a trademark since Ohio State was simply utilizing it ornamentally on garments rather than to identify the source of its goods. 
  2. Presence Of Already Registered Trademark: “Marc Jacobs”, the apparel company already filed a trademark application for the same mark encompassing clothing goods, thus the USPTO mentioned a probable refusal based on the chance of confusion grounds. 

Therefore, both the parties (Marc Jacobs & Ohio State) agreed to alter their applications to show that they may both own a registration for the same trademark in connection with clothing products without creating confusion in the marketplace. Hence, in their trademark applications, Ohio State stated that their goods are “promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics”, whereas Marc Jacobs stated that their goods are “promoted, distributed, and sold through channels customary to the field of contemporary fashion”. 

Outcomes

Ohio State put three years into proving to USPTO that the phrase “THE” used by Ohio State and its licensees on clothes is not ornamental; rather, it acts as a marker of secondary source and sponsorship by Ohio State.  

Although the registration is unquestionably a triumph, Ohio State is not yet in a position to unilaterally control the term “THE”. Various other trademarks using the word “THE” in conjunction with apparel items co-exist with Ohio State’s registration. In reality, a large portion of these registrations is from colleges and universities, like The Pennsylvania State University, The University Of Oklahoma, and The University Of Georgia, among others. 

This makes the trademark registration’s scope somewhat limited, but it nevertheless provides Ohio State with a useful additional tool for pursuing counterfeiters who try to benefit from Ohio State’s reputation without paying for their goods. Ohio State obtained federal trademark protection for the mark, as stated in one of its office action answers, “to safeguard its dedicated consumer fan base from the prevalence of counterfeit merchandise.” 

On the registration of the trademark “THE”, the university spokesperson said: 

Ohio State is pleased to be the proprietor of a trademark for “THE” on branded goods sold through collegiate and athletic channels. The Ohio State community has used “THE” as a rallying cry for many years, and Buckeye supporters who buy official Ohio State merchandise support student scholarships, libraries, and other university programs. Like other universities, Ohio State endeavors to safeguard its name and trademarks because these resources are advantageous to staff and students and further our primary academic goals of teaching and research. Averaging about $12.5 million in annual earnings, Ohio State’s trademark and licensing program help to support the university’s programs and student scholarships.” 

However, this trademark neither provides the Ohio State with exclusive authority to use the word “THE” nor grants the authority to forbid other universities from using “THE” with their names. To give just two examples, the universities of Oklahoma and Arizona each have registered trademarks for the terms “The University of Oklahoma” and “The University of Arizona,” respectively. 

Conclusion

The battle of earning “THE” trademark by The Ohio State University shows that trademarks play a vital role for an organization involved in any kind of business to protect its identity and authenticity. It is an asset for an organization, the value of which grows over time as per the growth of the organization and it safeguards the owner of the trademark against its unauthorized use. 

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