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Ohio State University Fails to Own trademark “THE”

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The Ohio State University (OSU) did something that may come as a surprise to many. It applied to trademark a word found in all blogs, articles, and novels. The trademark application indicates the trademark was to be used for clothing items OSU sells. The Ohio State University applied to trademark the word “THE” in August, 2019.

The university first started using the word “THE” in its merchandise in 2005. However, the clothing OSU sells using the word “THE” is miniscule. Of the $100 million in sales the school received from licensed merchandise every year, five percent comes from apparel with “THE” on it.

Chris Davey, The Ohio State University pokesman defended the trademark application however. He voiced his support by stating, “these assets hold significant value, which benefits our students and faculty and the broader community by supporting our core academic mission of teaching and research.”

Trademark Application Process

After a trademark application is submitted, the U.S. Patent and Trademark Office (USPTO) determines whether it has met the minimum filing requirements over the span of several months. The application is then reviewed to determine if it complies with all applicable rules, statutes, and fees.

The review process includes a search of conflicting marks. If the USPTO determines the mark should not be registered, the applicant will receive an Office action explaining why the application was rejected.

Applicants have up to 6 months of the issue date of Office actions to respond, or else the application would be declared abandoned where it is no longer pending, and unable to be registered. If the examining attorney raises no objections, or if the application’s objections are rectified, the mark will be published in the USPTO’s weekly publication, the “Official Gazette.” This allows parties to be aware of potential marks to be published that may be harmed.

Parties potentially harmed have 30 days from the publication date to file either an opposition to registration or request an extension for time to oppose. If no successful opposition is made, the application enters the next state of registration, which usually takes between three to four months. If the applicant is successful, the USPTO registers the mark and sends the owner a certificate of registration.

“Merely Ornamental”

In September 2019, the USPTO denied The Ohio State University’s trademark for being “merely ornamental.” The USPTO describes this type of refusal as one that “can appear to only decorate goods and not indicate the source of the goods. The USPTO indicated small designs or discrete wording may be registered as a trademark. The university however has used the word “THE” prominently in large caps on its t-shirts, baseball caps and hats. Clothing designer, Marc Jacobs was denied trademarking of "The" on August 28, 2019, making it more difficult granting The Ohio State University’s request.

The Ohio State University’s Options

The USPTO decision on The Ohio State University’s application included a listing of options to pursue. These options include submitting a different “specimen” to substitute for the word applied for, amend the supplemental register, a second trademark register that could be capable of functioning as a source indicator, submit evidence that shows the mark applied for is distinctive of the OSU’s goods, and provide proof the mark is already a source indicator for other goods OSU sells. OSU Spokesman, Ben Johnson said the university is reviewing its options. There is no indication what the university plans to do and they have until March, 2020 to respond to USPTO’s decision.

One option not listed in the letter received by the USPTO is to make an agreement with Marc Jacobs. Rick Van Brimmer, OSU’s Assistant Vie President for Trademark Licensing Services indicated the school’s trademark application was a “defensive measure” due to Jacobs attempt to use “THE” on accessories. Van Brimmer said, “we want to protect that we were already doing.” An agreement between competing parties over a mark was made between Ohio State University and Oklahoma State University. The two universities signed an agreement allowing both to use the OSU trademark nationwide.

Distinguish Your Goods

We recommend that you not make the same mistakes The Ohio State University and Marc Jacobs made. It is important that you ensure your mark clearly distinguishes the source of your goods. The application process to register a trademark is a lengthy and complicated process, making an unsuccessful trademark registration even more disappointing. It is also important you understand the process so you won’t make a mistake that would cost you time and money. If you need assistance filing for a trademark or other forms of intellectual property, contact Whitcomb, Selinsky PC at (303) 534-1958 or complete an online contact form.

 

 

About the AuthorRaymundo Ribota

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