Can you own the word “the”?

The Ohio STate University Can you own the trademark for a basic word like “the”? In some cases, yes. The Ohio State University (OSU) has received a trademark registration for THE in connection with clothing, namely T-shirts, baseball caps and hats. As CNN reported, OSU won the right to “the” after a nearly three-year legal battle. The university filed an application with the US Patent and Trademark Office (USPTO) in 2019. As the National Law Review relates,
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.
As the New York Times notes, OSU and Jacobs
reached an agreement in 2021 that would allow them both to register for trademarks for the word; Ohio State’s trademark is limited to clothing — T-shirts and hats — that are sold through “channels customary to the field of sports and collegiate athletics,” according to its trademark.
As CNN notes,
The university started using "the" with its name in 1986 when the institution introduced a new logo in the hopes of moving away from the "OSU" symbol, according to the school. The move was intended in part to distinguish it from two other schools with the same initials -- Oregon State University and Oklahoma State University.
The OSU mark “The” appears on branded merchandise and generates revenues that support scholarships, libraries, and other university projects. The University’s trademark licensing program generates more than $12.5 million annually. Of course, this doesn’t mean that everyone has to pay royalties to Ohio State every time they use “the” in a sentence. As the New York Times explains,
The trademark, issued on Tuesday by the U.S. Patent and Trademark Office, won’t unleash heavy-handed lawyers in search of anyone using the word “the” — its protections are limited to a narrow set of circumstances that people are unlikely to cross unless they are selling knockoff Ohio State merchandise. But it gives the university some protection against unlicensed sellers, and adds to the school’s efforts to link itself to the very common word.
Many other trademarks include “the,” as the National Law Review explains:
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.
Categories: Trademarks