The most commonly used word in the English language, the definite article "the" derives from gendered articles in Old English - "se" (masculine), "sēo" (feminine) and "þæt" (neuter). In Middle English, these merged into "þe", the ancestor of the Modern English word "the".
It seems strange that such a simple and common word that derived from Old English recently caused some dilemmas linked with trademarks in our modern times, but that's exactly what happened.
In August 2019 Ohio State University decided that, as many of the school's logos and signs already included the article "The" in front of the university name, it may have as well applied to trademark it.
The university therefore filed Application No. 88571984 with the U.S. Patent and Trademark Office (USTPO) requesting to register the word "THE" to be able to use it in capital letters on commercial items such as garments and accessories that would bear the word in large characters and the university logo in a smaller size.
Founded in 1870 as the Ohio Agricultural and Mechanical College, OSU changed its name to The Ohio State University in 1878 and already sells a wide range of merchandise with the longer phrase, that's where the idea for the trademark application came from.
But, unfortunately for Ohio State, academia isn't always as fast as fashion when it comes to apply for unfounded trademark requests. Indeed Marc Jacobs' company had already applied to register the word "The" for what regarded garments and accessories (in connection with the definition "The Backpack Marc Jacobs", "The Book Bag Marc Jacobs", "The Tote Bag Marc Jacobs" or "The Marc Jacobs", for example) in May, an application approved by the U.S. Patent and Trademark Office in June 2019, but under review.
Apart from the fact that Marc Jacobs would have had priority in this case, there was another issue that should have been considered by the university, as Josh Gerben, a trademark lawyer from the prestigious Washington, D.C.-based Gerben Law Firm, pointed out also on his Twitter account (follow him here to discover more intriguing intellectual property cases and solutions) - you can't register for trademark a word to print it or embroider it on a T-shirt or a hat, you must also include it on the label for that specific item.
At the time of applying for registering the article "The", Ohio State University wasn't new to other trademark attempts: in 2017 it filed for another registration, that time of the acronym "OSU", on clothing and apparel, generating a legal conundrum with another "OSU" - Oklahoma State University. Eventually in that case the two universities agreed that they could have both used the acronym on a national basis.
Now, people who aren't really that interested in legal matetrs may think all these applications for acronyms and articles are an exaggeration, almost the result of an obsession, but universities know that branding yourself is essential for different reasons, protecting the name of the institution is indeed not just a question of pride, but of financial value.
In September 2019 the U.S. Patent and Trademark Office turned down Ohio State University application explaining that the article didn't distinguish OSU's merchandise from other brands/companies'. The trademark office stated indeed that the word was not a clear sign of association with the university and rejected the application explaining: "Registration is refused because the applied-for mark as used on the specimen of record is 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."
Last year, in March 2020, the university filed "defense action" ahead of Jacobs' own appeal, asking the Patent and Trademark Office to reconsider its decision.
Out of time to continue settlement discussions, Ohio State University filed early last Friday a "Notice of Opposition" with the Patent Office's Trademark Trial and Appeal Board to block Marc Jacobs' trademark filing for the word "The" (as he applied first for the word "The") claiming that the University was the rightful owner of this trademark. Eventually, the two entities filed a Consent to Register Agreement coming to an agreement on the same day, to suspend opposition and avoid in this way a court case that may have taken until the end of 2022 to resolve if it had progressed.
The solution came when the parties decided they are both seeking exclusive rights to the word, but in different categories or markets - Ohio State University for athletic-related items and leisurewear; Marc Jacobs for high-end apparel and accessories.
That said this division is a bit unclear: a hoodie is universally considered as a very basic piece of the athletic-wear wardrobe, but, as we all know, it is also a very fashionable and trendy garment, and there are luxury houses producing hoodies that look like ordinary ones used to do sports, but, being designer items, they are considered as high fashion.
Will the USTPO accept this agreement that would allow both The Ohio State University and Marc Jacobs to use their beloved "THE" or will it consider this registration as confusing for consumers? Time will tell, but if you're a designer, beware of the power and the pitfalls that some parts of speech may pose when registering your brand or your line.
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