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  • Writer's pictureDavid Baker

THE U.S.P.T.O. fumbles THE ruling on THE Ohio State University trademark

While most of us were distracted by the U.S. Supreme Court making some questionable rulings on states’ rights regarding restrictions on the possession of firearms in public and allowing women the right to get abortions without restrictions, the U.S. Patent and Trademark Office made a very strange ruling. It granted a request by The Ohio State University to grant it exclusive rights to the use of the word “THE” as a trademark.

Yes, you read that right. The P.T.O. granted The Ohio State University the exclusive (sorta) right to use the word “THE” as a registered trademark (Reg. No. 6763118).

Ohio State originally filed an application for registration of the word “THE” in August 2019. The registration was proposed in International Class 25 for “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” and it had first been used in this manner in 2005.

Before completely losing its mind, the P.T.O. initially rejected the application on the grounds that the trademark appeared to be for a "merely decorative manner" and as an "ornamental feature" that didn't function as a trademark that would differentiate the items from others.

Further, fashion designer Marc Jacobs already had applied for registration of the word "THE" on his products months before Ohio State filed its application. But the P.T.O. found Jacobs contentions just as silly and rejected his application as well.

Indeed, these decisions were consistent with the Lanham Act, the federal law creating the P.T.O. and setting up the framework for U.S. trademark law. It also was consistent with the primary purpose of trademarks, namely, to protect consumers from confusion about the specific source of particular goods or services. Case law enforcing the Lanham Act even uses the “confusingly similar” standard to decide cases of trademark infringement. If a later trademark is determined to be confusingly similar to an earlier mark, then the later mark is said to be infringing.

Refusing to accept defeat (or even simple logic), Ohio State responded by arguing that the school's trademark and licensing program generates more than $12.5 million a year in revenue and funds university scholarships and programs. And when it reached an agreement with Jacobs last year allowing them both to use the “THE” mark, the P.T.O. must have been convinced that either (a) its own reasoning was flawed, (b) Ohio State’s arguments were suddenly convincing, or (c) someone at the Office is a big enough Buckeyes fan to influence the outcome of the decision.

But what does this mean, you may be asking? Will you have to pay a licensing fee to Ohio State for all the times you used “THE” in this article? And, if so, how much will it cost and will they accept payment in BitCoin?

Jason Gay, writing for The Wall Street Journal on June 24, had this to say about the goofy decision,

To be clear, Ohio State doesn’t now own the use of the word “the.” The Wall Street Journal doesn’t suddenly have to start referring to itself as Wall Street Journal. “The Godfather” doesn’t become “Godfather,” the Rock isn’t now Rock, you don’t have to ask to “pass potatoes,” and the ghost of Jim Morrison doesn’t have to haunt your dreams singing This is end. When your Dad refers to Instagram as “the Instagram,” he doesn’t owe money to the administration in Columbus.
The, the, the, the, the—see, I can use the word as much as I want, and Ohio State can’t ask for a penny. Even if they did, try and get it, suckers.

Why It Matters. Interestingly, most of the federal trademark registrations held by Ohio State are registered to “The Ohio State University.” Apparently, there is not only confusion in Ohio about who should be associated with the word “THE” when it comes to branding but, more importantly, there must be considerable confusion in Ohio about which Ohio State University is the real Ohio State University. Otherwise, why would any of this matter?

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