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Ohio State University just Trademarked the word ‘THE’

Jul 14, 2022 | Intellectual Property, Trademark

At first they were denied, but Ohio State University has officially registered a trademark with the United States Patent and Trademark Office (USPTO) for the word “THE.”

It is a word that the university started using in 1986 when they introduced a new logo, moving away from the “OSU” symbol that may confuse Ohio State with other schools bearing the same initials (e.g. Oregon State University and Oklahoma State University).

Viewers of NBC’s Sunday Night Football and ESPN’s Monday Night Football have likely noticed that Ohio State alums — during their taped player introductions — will say they attended “The Ohio State University” or “The Ohio State” with an emphasis on “the” to make it sound like “thee.” These introductions were even parodied on Saturday Night Live in 2014.

A Saturday Night Live parody of NBC's Sunday Night Football. A man in a Baltimore Ravens football jersey gives an introduction about himself

Saturday Night Live’s 2014 parody of the player introductions

Why they applied for the trademark

The university applied for the trademark in Aug. 2019 and it was officially approved on June 22.

“When I first saw what they were trying to do, it caught me off guard. Trademarking such a common word is difficult and, thus, rare. But it is no different than taking any other word and using it specifically for a brand,” said Tye Biasco, a Principal at Patterson Thuente IP and the head of the firm’s trademark department.

Ohio State will use the mark for branded products associated with the school that are sold through its athletics and collegiate channels, according to Ben Johnson, a spokesperson for the university.

It is difficult to trademark a common word like “the” because of how hard it is to make it distinguishable. Successful trademarks must identify products or services to be from a particular source and they must distinguish those products and services from others.

Look no further than Apple, Inc. to find perhaps the best example of making a strong brand from a common word. Apple took a common, everyday fruit and made it one of the most valuable five-letter words on the planet. The company has over 1,000 trademarks and a 2021 valuation of its intangible assets (of which intellectual property is a big part) was almost $1.9 billion.

“It brings up a whole point that branding can be huge. And again, Apple is not a made-up word. That is just a case where they do something arbitrary and the mark really takes off,” Biasco said.

THE Competition

Ohio State was not the only brand vying for a trademark on “the”; fashion label Marc Jacobs also applied for a trademark on the same word in 2019. The two sides fought over usage of the mark until April 2021 when they filed a consent to register agreement, pending the USPTO’s approval of the mark.

“We were not trying to get exclusive right to ‘THE.’ … This thing is mostly about they’re staying in their lane and we’re staying our lane. They’re high-end apparel and accessories. We’re athletic-related, mostly leisure-wear items,” Rick Van Brimmer, Ohio State’s assistant vice president for trademark licensing services, told Bleacher Report in 2021.

Marc Jacobs uses “the” as a prefix for many of its products: “The Monogram Mini Tote Bag” and “The Glam Shot Compact Wallet” are two examples.

Apparel from Ohio State University in the form of a hat (left) and fashion label Marc Jacobs in the form of a crewneck sweater (right) displays each brand's use of the word "the"

Comparing different ways to use “the” on apparel

After an initial rejection of the application, Ohio State asked the USPTO in 2020 to reconsider its decision. The school also called their filing a “defensive action” given Marc Jacobs’ pending trademark application for the same word.

The trademark’s importance, odds of survival

“THE” is clearly an important enough element of Ohio State’s brand that they have proceeded through the trademark registration process. Moreover, the university’s trademark and licensing program generates an average of more than $12.5 million annually. This money provides funding for university programs and student scholarships, according to Johnson.

But Ohio State will not own the rights to the word “the.” As Van Brimmer noted, it will be athletic-related, leisure-wear items that are sold by the university — likely with a crest, logo, colors or numbers denoting the university.

And the trademark will have to survive its first five years of use, as any party can petition for cancellation within that period on the grounds that the entity is not functioning as a trademark. That means that within the next five years, you could see another university petition that the trademark is not functioning to identify the source of the product i.e. not identifying Ohio State University as the source.

“The stronger a mark is, the more protection you will have,” Biasco said. “It just proves that if you can get people to recognize a logo or a name as yours, then you can successfully register and enforce your intellectual property on that trademark.”

Tye Biasco is a Principal at Patterson Thuente IP. His practice as a registered patent attorney includes helping clients develop patent and trademark protection and enforcement strategies, striving to add value to their IP portfolios. Tye is filing correspondent on more than 1,500 U.S. and non-U.S. trademark and service mark registrations. Contact Tye to learn how to best use trademarks to add value to your intellectual property.

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