United States: In Defense Of Ohio State's Application To Register THE As A Trademark

Last Updated: August 19 2019
Article by Jenevieve J. Maerker

The picture you see is of a shirt from my husband's closet – a gift I gave him a few years ago. He is a big Ohio State Buckeyes fan, and this is sort of an inside joke for OSU football fans. The word THE superimposed on the shape of the state of Ohio, in scarlet and gray, instantly calls to mind Ohio State. For some reason I have never grasped, Buckeyes like to refer to their school as THE Ohio State University, with huge emphasis on the word "the." This is particularly noticeable at the beginning of NFL football games, when former OSU players always introduce themselves as, for example, "Ezekiel Elliott, THE Ohio State University." I saw someone wearing a shirt like this once, thought it was funny, and searched online until I found where I could buy it – a company called Lamp Apparel. It didn't occur to me at the time that I might be supporting trademark infringement.

Fast-forward to this week, when news outlets around the country have been reporting with thinly disguised mirth on the fact that Ohio State just filed an application to register the word THE as a trademark for t-shirts, baseball caps, and hats. "How can anyone own the most common word in the English language?" people ask. Of course, a trademark only prevents third parties from using the mark to identify the source of the relevant goods, not from using the word at all. But people who find it pretentious to emphasize the "the" in the first place find it even more pretentious to file a trademark application. The teasing from rivals both in-state and out was swift:

I have attempted to track down the origins of the emphasis on THE, but the Internet abounds with conflicting explanations. An OSU admissions officer says that she tells parents of prospective students that it stands for "tradition, honor, and excellence." Some people point out that "the" is part of the university's official name, since the name was legislatively changed in 1878 from "Ohio Agricultural and Mechanical College":

(This explanation seems a bit thin to me, since I attended THE University of Texas at Austin, and yet nobody pronounces it that way.) One person suggests that it arose as a way to distinguish OSU from Ohio University, the other state-supported college (see evidence of rivalry above), in the wake of a trademark dispute over the right to use the word OHIO alone. That dispute did happen – in 1997, OSU opposed OU's application to register a stylized OHIO with a bobcat design for clothing and athletic events. The schools settled the dispute two years later with an agreement that OSU could continue using OHIO alone in ways consistent with its prior uses, but I haven't found any indication that this dispute underlies OSU's emphasis on THE. In any event, it is definitely a thing, and it's particular to Ohio State.

That's why, when Lamp Apparel started selling shirts like the one I bought a few years ago, OSU reasonably concluded that the company was trading on its goodwill, and filed suit for trademark infringement in 2017 in the U.S. District Court for the Southern District of Ohio. The complaint alleged ownership of a number of registered and common-law trademarks associated with Ohio State that Lamp was allegedly violating. Although the complaint did not mention the THE mark specifically, variations of the shirt my husband owns appeared in several photographs included in the complaint:

The infringement lawsuit was resolved just four months after it was filed, via a consent injunction in which Lamp agreed to cease distributing the products depicted in the complaint. Again, while the THE mark was not specifically mentioned in the injunction, it is presumably included among the "products depicted in the complaint," and Lamp indeed no longer sells it. While OSU managed to put an end to that instance of infringement, its claim with respect to the THE shirt was not as straightforward as it might have been – hence the school's understandable desire to obtain a federal registration to support enforcement of its mark.

The recently filed application, however, may face some roadblocks. For starters, the school may face a "merely ornamental" refusal, on the ground that the specimen shows the mark used only as decoration on the goods, and not as an indicator of source:

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In addition, the application may be refused on grounds of likelihood of confusion with a prior application filed by Marc Jacobs on May 6, 2019 to register the mark THE for various items of clothing, including t-shirts, hats, and caps:

Of course, Ohio State's application claims use since 2005, and Marc Jacobs' claims use only since 2018, so OSU may be the senior user. We will follow with interest the progress of Ohio State's application, and its attempts to enforce trademark rights in the quirky insignia of fandom and school pride.

If you're looking for further thoughts on college football trademarks in the run-up to the first games of fall, check out our prior post on IP issues surrounding the first COLLEGE FOOTBALL PLAYOFF in 2015 – won by, naturally, THE Ohio State University Buckeyes.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

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