Photo by Cytonn Photography on Unsplash
Claire Wortsman is an IPilogue Senior Editor and a 2L JD Candidate at Osgoode Hall Law School.
Which trademark battle? THE trademark battle—the one over who owns trademark rights in the word “THE”. In May 2019, Marc Jacobs Trademarks L.L.C. (MJT) applied to the United States Patent and Trademark Office (USPTO) seeking registration for use of the word “THE” on clothing, handbags, and related goods. Three months later, The Ohio State University (OSU) filed their own application for use of the word “THE” on clothing and related goods.
Although OSU claims to have used the mark in commerce since August 2005, MJT’s application was filed earlier. As a result, OSU was informed in September 2019 that MJT’s application may bar theirs from registration. In April 2021, OSU filed a Notice of Opposition claiming damages if the USPTO registered the mark “THE” to MJT. THE dispute between the two parties continued from there.
In August 2021, OSU withdrew their opposition proceeding. A university spokesperson reported that it was “pleased to have reached an agreement with Marc Jacobs,” noting that, “Marc Jacobs’ THE branded products are associated with high-end/contemporary fashion,” and would therefore be sold through different channels than OSU’s THE branded athletic and collegiate products. Likely connected to the agreement reached with OSU, MJT amended their trademark application in April 2021. They added the qualifier that their list of goods be, “promoted, distributed, and sold through channels customary of the field of contemporary fashion.” On the other hand, OSU’s application qualifies that their list of goods will be, “promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics.”
OSU’s withdrawal of their opposition proceeding does not, however, guarantee the success of MJT’s application. OSU is not the only party to object against MJT. The USPTO previously noted problems with MJT’s application, particularly that the mark fails to function as a trademark, “indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.” For example, in MJT’s most recently submitted trademark ‘specimen’, the word “THE” appears ornamental.
The specimen, a red sweater, features “THE” in black lettering, “directly on the upper-center area of the front of a sweater where ornamental elements often appear,” rather than “on the pocket or breast area of a shirt,” where, “consumers may recognize small designs or discrete wording as trademarks.” OSU’s submitted specimen, a red T-shirt, features “THE” in white lettering, also on the upper-center area. OSU’s T-shirt also features the Nike logo on the pocket or breast area as well as the Ohio State logo directly underneath the “THE” lettering. While a mark may be simultaneously ornamental and source-identifying, something merely ornamental may not be registerable as a trademark and will likely be refused for failure to function.
In my experience, both Marc Jacobs and OSU have several clear, source-identifying marks and “THE” is not one of them. While I might be able to tell that a high-quality sweater with “THE” lettering is a Marc Jacobs product, that does not mean that “THE” is source-identifying. Those interested in fashion could also likely identify a high-quality sweater with a day of the week embroidered as an Alberta Ferretti product. Yet Alberta Ferretti likely would not successfully trademark “MONDAY,” “TUESDAY,” and so on.
The USPTO noted that OSU submitted many blog posts, articles, and comments as evidence which refer to “THE OHIO STATE UNIVERSITY” as a whole, not “THE” on its own. This is similar to the way in which “THE” sits on top of the “OHIO STATE” logo on OSU’s submitted specimen. In my view, “THE” alone would not be enough to indicate what the apparel represents, or even which university (The University of Oklahoma? The University of British Columbia?).
As a consumer, I find both THE applications puzzling as I fail to see how “THE” is source-identifying. That being said, the USPTO will have the final word—or already has in OSU’s case, if OSU fails to respond to their most recent Office Action by February 2022, in which case their application will be deemed abandoned. In the meantime, I will keep an eye out for more updates on THE matter.