Over the past several weeks, we have been discussing a ridiculous trademark application filed by the Ohio State University for the word “the.” This entire episode has been a painful reminder of the fallout of the permission culture that has risen up out of strict IP enforcement and an overly-permissive USPTO. The idea that so common a word could be locked up by a public university for any market designation is, ahem, patently absurd. So absurd, in fact, that even OSU alumnus and college football commentator Kirk Herbstreit thought the whole thing was silly.
Still, given the Trademark Office’s history of approving far too many absurd trademarks, there were still some holding their breaths awaiting its decision on the application. For now, at least, the USPTO has rejected OSU’s application, though not quite as forcefully as it should have.
The USPTO’s document lists says it was refused because “the applied-for mark as used on the specimen of record is merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.”
Basically this ruling says is that the word wanting to be trademarked cannot just be on the apparel, but has to be part of the marketing and must be on the tag or label as well. Ohio State is not using the trademark properly according to the USPTO, and could reapply if they do begin to label their clothing in a way that goes along with the trademark guidelines.
The decision itself leaves the door open for OSU when it probably shouldn’t. Essentially, the USPTO is noting the common word in question only in passing, instead focusing on how OSU is trying to use that word on apparel. Basically, the Trademark Office is saying that the manner in which OSU’s application says it’s going to use the word “the” isn’t distinctive or source-identifying, but says perhaps OSU could prove it actually is in the future.
In appropriate circumstances, applicant may overcome this refusal by satisfying one of the following options:
(1) Submit a different specimen (a verified “substitute” specimen) that was in actual use in commerce at least as early as the filing date of the application (or prior to the filing of an amendment to allege use) and that shows proper trademark use for the identified goods in International Class 25. Examples of acceptable specimens that show non-ornamental use on clothing include hang tags and labels used inside a garment.
(2) Amend to the Supplemental Register, which is a second trademark register for marks not yet eligible for registration on the Principal Register, but which may become capable over time of functioning as source indicators.
(3) Claim acquired distinctiveness under Trademark Act Section 2(f) by submitting evidence that the applied-for mark has become distinctive of applicant’s goods; that is, proof that applicant’s extensive use and promotion of the mark allowed consumers now directly to associate the mark with applicant as the source of the goods.
(4) Submit evidence that the applied-for mark is an indicator of secondary source; that is, proof that the mark is already recognized as a source indicator for other goods or services that applicant sells/offers.
(5) Amend the filing basis to intent to use under Section 1(b). This option will later necessitate additional fee(s) and filing requirements.
It’s unclear how much of this is pure boilerplate as opposed to specific guidance by the USPTO for this specific application. I would hope it’s the former, because I can’t begin to imagine how OSU is going to overcome the refusal on any of those counts, given that we’re talking about the god damned word “the.” The only reason for any of this nonsense is that alumni football players have tended to go on NFL broadcasts and introduce themselves with an emphasis on the word “the.” That’s literally it. How such practice could make the word “the” source identifying is pure mystery.
Given the derision and blowback, one would hope the Ohio State University would now just go away and stop all of this.
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