August 9, 2022

Volume XII, Number 221

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August 08, 2022

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“THE” Trademark of the Year? Ohio State University Trademarks THE

The Ohio State University has successfully obtained a trademark registration for the word “THE,” which has been the university’s moniker and rallying cry at sporting events for decades. The trademark registration covers “clothing, namely, t-shirts, baseball caps and hats; all of the foregoing being promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics.”

The registration was not easy to secure. The United States Patent and Trademark Office (“USPTO”) initially refused Ohio State’s application for two reasons.

First, the USPTO argued that “THE” failed to function as a trademark, as Ohio State was only using the word ornamentally on clothing, rather than to signify the source of its goods.

Second, the USPTO cited a potential refusal on likelihood of confusion grounds, because fashion house Marc Jacobs owned an earlier-filed trademark application for the identical mark, covering clothing items.

For three years, Ohio State worked to show the USPTO that, when used by Ohio State and its licensees on clothing, the term “THE” is not ornamental, but rather serves as an indicator of secondary source and sponsorship by Ohio State. It also secured Marc Jacobs’ consent to register the mark, and the parties agreed to amend their respective applications to demonstrate that they could both own a registration for the identical trademark in connection with clothing items, without causing confusion in the marketplace.

Specifically, Ohio State amended its trademark application to clarify that its products are “promoted, distributed and sold through channels customary to the field of sports and collegiate athletics” and Marc Jacobs amended its application to clarify that its products are “promoted, distributed, and sold through channels customary to the field of contemporary fashion.”

While the registration is certainly a victory, it does not give Ohio State carte blanche to control the term “THE.” Ohio State’s registration coexists with countless other trademarks incorporating the word “THE” in connection with clothing items. Indeed, many of these registrations are in the collegiate space, including THE PENNSYLVANIA STATE UNIVERSITY, THE UNIVERSITY OF OKLAHOMA, and THE UNIVERSITY OF GEORGIA, among others. Furthermore, it coexists with Marc Jacobs’ registration for the identical standalone trademark THE in connection with clothing items, provided that the products are distributed through different channels of trade.

While the scope of the trademark registration is therefore somewhat narrow, it does give Ohio State another valuable tool to pursue counterfeiters who attempt to free ride off of Ohio State’s goodwill. As Ohio State noted in one of its office action responses, it requested federal trademark protection for the mark “to protect its loyal customer fan base from the prevalence of counterfeit apparel.”

It remains to be seen how broadly Ohio State will try to enforce the registration, including whether it will try to pursue third parties selling clothing branded with “THE” if the clothing is not distributed in the collegiate/sports space, or does not otherwise include additional indicia of Ohio State, such as the buckeye leaves or scarlet and gray color scheme. 

© 2022 ArentFox Schiff LLPNational Law Review, Volume XII, Number 179
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About this Author

Richard L. Brand Partner ArentFox Schiff LLP
Partner

Rich focuses on sports law, real estate and corporate transactions, e-commerce, hospitality and leisure, and partnership and corporate law.

Rich is recognized as a leading sports attorney by Chambers USA, a “Leading Lawyer” in sports by Legal 500, and as a leading real estate attorney by Best Lawyers and Legal 500Best Lawyers has also recognized Rich as a “Lawyer of the Year” for his high-profile sports work. Chambers USA notes, “he is highly regarded for his expertise in representing both...

415-757-5507
Amy McFarland D.C. Fashion and Retail Lawyer ArentFox Schiff
Partner

Amy (Solomon) McFarland is a Partner at ArentFox Schiff's Washington, D.C. office. She works with clients on a wide range of intellectual property matters, including trademark, copyright, right of publicity, and domain name disputes.

Amy has particular experience in the media and entertainment, fashion, sports, and alcoholic beverage industries. 

She has also worked in-house, including two stints at a major, international media company during the Senior Vice President of – Intellectual Property’s parental leaves. She...

202-857-6015
Megan A. Rzonca New York Entertainment Lawyer ArentFox Schiff
Associate

Megan A. Rzonca is an Associate at ArentFox Schiff's New York City office. She advises clients in the fashion, retail and entertainment industries.

Megan’s practice focuses on commercial transactions and brand protection in the areas of fashion, retail and entertainment. She routinely drafts and negotiates licensing, collaboration, marketing, service, software, technology, settlement and co-existence agreements as well as right of publicity releases. Megan’s leasing practice includes drafting and negotiating luxury fashion retail and office...

212-457-5435
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