THE Ohio State University and THAT Trademark Application

I will never forget the first time I heard it. It was in an information session hosted by my high school’s college counseling department. The college counselor was talking about finding the “right school for you” by evaluating criteria like school size and location. He suggested, for example, if we liked the big, midwestern feeling of the University of Michigan campus, that we also consider visiting the University of Iowa or Ohio State University. And then it happened. He stopped, and with a wry smile said, “oh I’m sorry, THE Ohio State University.” I didn’t end up attending OSU, as I chose the University of Wisconsin instead, but that memory resurfaced this summer after it was announced that OSU had decided to attempt to trademark the word “the.”

In the intervening decade since that information session, by some twist of fate, I spent a couple years, post-undergrad, living adjacent to OSU’s campus while working for the CDC. During my brief tenure in Columbus, I met OSU alumni of all types. One thing they all had in common was that they’re very passionate about where they went to college. And why shouldn’t they be proud? OSU is home to a powerhouse football program and a marching band to match. It is a premier research institution with a renowned cancer hospital attached to it. Not to mention, the campus is beautiful—even as a loyal Badger alumna, I have to admit Thompson Library took my breath away the first time I walked inside its vast East Atrium.

No one really knows for sure, but perhaps it’s that confidence and pervasive pride that encouraged the 1878 Ohio General Assembly to adopt a law changing the name of “Ohio Agricultural and Mechanical College”—a scrappy land-grant institution, the ninth of its kind in the state—to “The Ohio State University.” It’s certainly with confidence and pervasive pride that the institution insists on being recognized by its full name today. Though subjected to much derision by non-Buckeyes, it continues to market itself wholeheartedly as THE Ohio State University.

Making It (TM) Official

OSU’s insistence on the use of its full name reached new levels this summer. On August 14, 2019, news broke that the university had filed a federal trademark application for the use of “the” when used in association with the university’s name or logo, specifically when printed on t-shirts and hats. According to the application, the purpose of the trademark is to protect assets of “significant value.” And though it doesn’t explicitly say so, one of those assets is almost assuredly the university’s brand. After all, that’s the primary purpose of trademarks.

Companies trademark words, logos, and even packaging that consumers associate with their products in order to indicate the source of the product. The goal is to prevent others from benefiting from or tarnishing the reputation and goodwill the trademarked brand has built. Ohio State has already trademarked the acronym “OSU” (and due to a settlement deal, it shares the mark with Oklahoma State University), so it clearly cares about protecting its name from unauthorized use in commerce.

An Anticipated Rejection

However, on September 11, 2019, the USPTO issued an Office Action rejecting OSU’s trademark application. Trademark experts, including attorney Josh Gerban, anticipated this outcome since the application was first posted on the USPTO’s website. The application stated that the mark was “used in commerce,” a fundamental requirement for successful federal trademark applications. Consequently, the USPTO requires evidence of that “use.” An applicant can demonstrate use by attaching a picture of the organization’s goods with the trademark affixed to it. OSU attached two such examples (pictured here)—a red t-shirt with THE emblazoned in white across the front, and a white baseball cap with THE embroidered in red. But it was the inclusion of these particular examples where OSU made a critical, and frankly rookie, error. Gerban explained the mistake in a video posted to twitter:

“In order for a trademark to be registered for a brand of clothing, the trademark must be used in a trademark fashion. In other words, it has to be used on tagging or labeling for the products. In this case, just putting the word ‘the’ on the front of a hat or on the front of a shirt is not sufficient trademark use.”

In the examples provided by OSU, “the” is being used merely in a decorative fashion. This is not an eligible “use” under the federal trademark statute, precluding registration of the mark with the USPTO.  

But, crucially, the USPTO never stated that the rejection was because “the” cannot be trademarked, unlike some of the bigger headlines on the topic would lead one to believe. In fact, in June, the Trademark Office accepted and is currently reviewing a similar application from Marc Jacobs. Like OSU, the clothing brand hopes to trademark “the” in association with its name, but they hope to use the mark in association with assorted bags and a variety of clothing items (i.e. THE BACKPACK MARC JACOBS). But unlike OSU, it submitted acceptable evidence of “use” in its application, like how it will be featured on product tags.

A Futile Exercise… or Savvy Marketing?

It is a little curious how an institution as large, well-funded, and respected as OSU could make such an obvious mistake on a trademark application. Sure, trademark applications aren’t that expensive (according to OSU’s application, it paid a $275 fee), and the university has six months to appeal the USPTO’s decision and revise its application to include proper examples, but why submit a half-baked application and subject the institution to derision?

If you ask me, timing is everything. OSU’s 2024 undergraduate application cycle opened August 1, 2019. Exactly two weeks later, news of the university’s most recent, and arguably controversial, trademark-scheme broke. What better way to drum up out-of-state interest in OSU than by creating a media frenzy? Especially a frenzy rooted in institutional identity and pride. No longer will OSU have to bank on its full name coming up, half-jokingly, in a high-school college counselor’s presentation; it made its name national news all by itself.

Besides, the application didn’t have to actually generate a registered trademark—trademark registration isn’t technically necessary to protect the mark, just helpful in future litigation. And OSU already has several registered trademarks to genuinely protect its brand. All it could have reasonably expected from this clumsy application were headlines. And those it received.

Elise Fester
Assistant Blogger
Loyola University of Chicago School of Law, JD 2021