“The Ohio State University.” If you’re an avid watcher of NFL football like myself, you’ve heard former Ohio State football players utter that phrase in their pre-recorded introductions on NBC’s broadcasts of the games. So many Ohio State alums, both football players and non-football players alike, love identifying their school in that fashion.
Courtesy of Dana Lewin via Unsplash
It had become such a large tradition that the school back in 2019 made a serious attempt at applying for federal trademark registration for the word “the.” One of IP Bytes’ former bloggers even wrote a post on the story. Of course, many trademark commentators and this former IP Bytes blogger did not seriously believe that this application would be granted and understandably so. How could an organization get a trademark registered over such a common word?
And yet, this past June, the United States Patent and Trademark Office (USPTO), the official authority that grants federal trademark registrations, granted Ohio State a registration over the word “the.” Let’s take a look at how this came to be.
A Way to Differentiate
So why exactly is Ohio State so big on calling themselves “the Ohio State University?” Most people assume it’s because Ohio State prides themselves on being a renowned collegiate institution. While that is partly the case, Ohio State states some other reasons as to why they use the phrase on their website.
First of all, Ohio State claims the phrase harkens back to when Ohio State was renamed to its current name from its original name, Ohio Agricultural and Mechanical College. The 1878 legislation enacting the name change states the university now “shall be known…as ‘The Ohio State University.’”
But even more importantly, Ohio State also began this phrase in 1986 to differentiate themselves. Ohio State was, and at times still is, called “OSU.” But a couple of other schools share that same acronym as well, such as Oklahoma State University and Oregon State University. The school wanted a new phrase that only designated their institution and that’s where they came up with “The Ohio State University.”
Use of the phrase reached new levels when Ohio State filed a trademark application for the word “The” back in August 2019 for use on sports apparel. However, this application was rejected by the USPTO the following month. The previous IP Bytes blog post explained why: “In the examples provided by OSU, ‘the’ is merely being used in a decorative fashion.”
In order for a trademark to be federally registered, the mark has to be “in use” on goods (or services) in commerce and that use must indicate the source of an organization’s goods to distinguish it from others. When the USPTO rejected Ohio State’s application on the grounds of mere decorative use, it did not believe that Ohio State was using the word “the” to identify their goods as coming from the University.
Furthermore, fashion house Marc Jacobs had also filed a federal trademark application for the same word. The USPTO was concerned that there would be a “likelihood of confusion” between the two marks. Likelihood of confusion is the standard in the case of a trademark infringement, which is about whether one has infringed upon another’s trademark. In the case of a registration, it can also be grounds for a rejection since a mark that is confusingly similar to another wouldn’t indicate source. That was the case here.
Yet a Successful Result
Most people believed that the rejection was the end of Ohio State’s attempt to trademark the word “the.” But Ohio State kept asking the USPTO to reconsider its initial rejection. They did so by responding to the USPTO’s Office Actions, the USPTO’s official decision on a federal trademark application. Eventually, on June 22 earlier this year, the USPTO granted Ohio State the trademark. Getting such a trademark allows the University to be the exclusive user of the word “the” on branded sports and collegiate apparel in commerce.
How did Ohio State eventually become successful on these appeals? Well, there are two reasons for that. First, the University had put together much evidence to demonstrate that the word “the” has obtained secondary meaning. This refers to a new meaning built up in the minds of consumers separate from the usual definition of “the” in the English language. So, in this case, the secondary meaning of “the” indicates source or sponsorship by Ohio State when it is used on Ohio State sports-related merchandise. Ohio State was able to successfully demonstrate that “the” has a unique meaning associated with the University thanks to their marketing efforts that branded the institution as “The Ohio State University.”
Secondly, after many negotiations, the University and Marc Jacobs were able to come to a deal. The parties agreed to amend each of their trademark applications to show that they could own identical trademark registrations in the clothing industry, without causing confusion in the marketplace. Thus, Ohio State clarified in its application that the trademark would only be used on collegiate sport merchandise. Marc Jacobs asserted that its trademark would only be found in the field of contemporary fashion.
By doing each of these tasks, the USPTO was swayed to give Ohio State a registered trademark in the term “the” for collegiate sports merchandise. So not only is Ohio State winning on the gridiron, but they’re also winning in the trademark field as well.
It is uncertain what exactly Ohio State plans to do with their new trademark. The University has publicly stated that it originally sought the trademark to protect consumers from buying counterfeit clothing. But legal commentators don’t have any guesses as to how broad of a protection Ohio State wants to create. They could possibly go after clothing producers not in the collegiate sport world or products that have no additional names and logos related to Ohio State.
Whether such challenges would be successful is highly questionable, considering many other universities have the word “the” in their name, such that there may not be confusion. But, as for now, getting the trademark registered with the USPTO has been a big victory for the Ohio State University.
Loyola University Chicago School of Law, JD ‘23