“The” is the most commonly used word in the English language, according to the Oxford English Corpus, and Ohio State is continuing its fight to trademark it.
The United States Patent and Trademark Office refused Ohio State’s attempt to trademark the word “The” Sept. 11, but the university is once again attempting a trademark on the word in retaliation over fashion brand The Marc Jacobs’ similar application.
“This is a defensive action in response to designer Marc Jacobs’ response to the office action in his application, which includes an example of his intended use that signals a potential encroachment on the established use of ‘The’ by Ohio State,” Ben Johnson, university spokesperson, said.
Marc Jacobs submitted an application to trademark “The” on May 6, 2019. Ohio State filed a similar application to trademark the word Aug. 8, just more than three months later. The two applications aimed to trademark the word for use on clothing and apparel.
Both registrations were refused by the trademark office as nonfinal office actions, which allowed each party six months to file a response to the refusal before the trademark office closed the cases.
Marc Jacobs’ application was refused on the grounds that the mark was not used to distinguish its goods from others, and the provided evidence did not show the mark in use in commerce. Marc Jacobs filed a response to the office action Feb. 12, asking a part of its application “be amended to intent-to-use” the mark to distinguish its apparel. The response also included an image of a red sweater bearing the mark to show its use in commerce.
The inclusion of this image prompted Ohio State to take action. The university filed a response March 11.
Ohio State’s application was refused on the grounds that the mark was “merely a decorative or ornamental feature of applicant’s clothing” and does not distinguish Ohio State’s clothing from others.
In Ohio State’s response, attorney Samantha M. Quimby said Ohio State “respectfully disagrees” with the office’s decision.
“This is a case where the applied-for mark, namely THE (the Applied-for Mark), when used in connection with clothing apparel, is an indicator of secondary source and sponsorship,” Quimby said.
Richard VanBrimmer, assistant vice president of business advancement, affinity and trademark management at Ohio State, wrote the original declaration for Ohio State’s trademark candidacy and said fans demonstrate their support by wearing “Ohio State Marks.”
“The decision to purchase apparel bearing the Ohio State Marks – including THE – arises from the purchaser’s desire to demonstrate his or her connection to, affinity for, or affiliation with the secondary source, namely The Ohio State University,” VanBrimmer said.
VanBrimmer said “the” has become a more pronounced aspect of the university’s name over time. Ohio State provided other forms of evidence to support the claims, such as university archives and news articles depicting the word’s widespread usage.
VanBrimmer and Johnson said the trademark is necessary to safeguard the university’s interests.
“Like other institutions, Ohio State works to protect the university’s brand and trademarks because these assets hold significant value,” Johnson said. “Trademark and licensing interests generate about $15 million in revenue each year to support the university’s students, faculty and staff and our core academic mission of teaching and research.”