Trademarks

THE Volokh Conspiracy keeps you up-to-date on THE Trademark System

Can the "the" - not to be confused with the band "The The" - be protected by trademark?

|The Volokh Conspiracy |

A couple of years ago, I wrote about [here] a simmering trademark dispute between OSU (Oregon State Univ.), OSU (Oklahoma State University), and OSU (the university known as "The Ohio State University") over the right to use the "OSU" brand on t-shirts, mugs, hats, etc.

From the ridiculous to the sublime: As reported first by trademark attorney Josh Gergen (here) and confirmed by university officials, OSU-Columbus—i.e., The Ohio State University—has filed a trademark application on the word "The."  [Its application is #88571984, if you want to navigate the Trademark Office's terribly antiquated searchable database to see it for yourself].

Apparently, OSU-Columbus sells hats, mugs, t-shirts, etc. with "THE"—nothing more, just "THE"—splashed prominently across the front (see the video, which has examples of the branded merchandise), and they want the right to stop others from doing so—at least, from doing so in a manner "likely to cause confusion" among consumers.

It's a tricky little trademark question, and I'm not at all sure whether the Trademark Office will grant the application.  It seems, intuitively, absurd to think that someone could own trademark rights in a word that is not just a common word, but "The word," the most common word in the language.  But on the other hand, it's not clear which, if any, exception to trademarkability would apply to support a rejection of the application, and it may well get through.

There is an important "functionality" doctrine in trademark law, which declares that "functional" features of a product—features that affect the cost or quality of the product, or those which competitors may need to use for reasons having nothing to do with trademark law—can't be the subject of trademark protection; John Deere would not receive trademark protection for the distinctive green color of its products if that color somehow affected the performance of the machines (it doesn't).  There may be a way to argue that the "The" qualifier similarly needs to be available to competitors, i.e. other institutions that want to demonstrate their supposedly unique status:  not just any University of Michigan but THE University of Michigan (ouch!), not just any National Rifle Association but THE National Rifle Association, etc. [And not just any Volokh Conspiracy, but The Volokh Conspiracy? Would consumers be confused by the VC's new line of "THE" mugs, coming this Christmas?]

 

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  1. The OSU is older and bigger than Oklahoma or Oregon. Go Bucks!

    1. “The OSU is older”

      If this is typical of the education you received there, it’s not very good.

      Oregon State University founded 1868.
      Ohio State University founded 1870.

  2. Hester Prynne and the Ayn Rand estate are fighting over their competing trademark applications for the letter “A.”

  3. Next they’ll try to patent the act of “dotting the ‘i'”

    1. Or crossing THE “T”.

  4. “the university known as “The Ohio State University””

    Only by idiots.

    Ohio Revised Code 3345.011:

    “State university” means a public institution of higher education which is a body politic and corporate. Each of the following institutions of higher education shall be recognized as a state university: university of Akron, Bowling Green state university, Central state university, university of Cincinnati, Cleveland state university, Kent state university, Miami university, Ohio university, Ohio state university, Shawnee state university, university of Toledo, Wright state university, and Youngstown state university.”

    No “The” to be found. An Ohio state university in Columbus is just one more Ohio state university.

    {Should I mention that I went to an Ohio state university in Columbus for law school and find the “The” obsession stupid and moronic?)

    1. What year did you graduate? I was in the class of 1985.

    2. “‘the university known as The Ohio State University’
      Only by idiots”

      Idiots such as the uneducated bozos who run the website at osu.edu, for example.

      1. ORC 3335.01 might also beg to differ.

  5. A company that makes camouflage might be a better example – they couldn’t trademark their specific pattern or color scheme as long as their advertising implied that said coloration actually makes it more difficult for a person wearing it to be spotted. I believe they’d have to patent it instead.

    Of course, they’d probably be able to trademark a pattern that was not intended to actually make the wearer harder to notice, but simply meant to look like what people think of as camouflage.

  6. Actually the University of Michigan dropped the ‘The’ in its formal name a while back. It had been added in the 1950s when UM lost the fight to prevent Michigan State College from becoming known as a university. And it was eventually removed, I understand, to seem less arrogant to state legislators responsible for higher ed funding (who may have graduated from another Michigan school).

    I’m pretty sure I have this right, but can’t provide any links (this is a topic that’s pretty much impossible to google).

  7. IIRC Ohio law is actually inconsistent on its use of the article The.

    The obvious answer is that The in the font or colors of Ohio state should be protected.

  8. Mr. Post, a few comments:

    Josh GerBen is the fellow’s name.

    “It seems, intuitively, absurd to think that someone could own trademark rights in a word that is not just a common word, but “The word,” the most common word in the language.” That is the common word fallacy; many well-known trademarks are common words. For example, an apple is a common fruit and also a trademark of a particular company based in Cupertino.

    “[I]t’s not clear which, if any, exception to trademarkability would apply to support a rejection of the application, and it may well get through.” The specimens show the mark used in an ornamental manner (see https://tmep.uspto.gov/RDMS/TMEP/current#/current/TMEP-1200d1e1688.html) so I’d be surprised if it doesn’t receive that refusal, though OSU may be able to overcome the refusal by showing acquired distinctiveness or secondary source.

    “THE” is not functional, but nor would recognition of trademark rights in it prevent other schools (or entities) from using or referring to themselves as “The University of ______”.

    1. I seem to recall that there was a well known record label with the name of Apple, that was founded in 1969 by 4 guys from Liverpool. There were some legal skirmishes with a Computer Company of the same name founded in 1976 by two guys from California named Steve. That ultimately resulted in an agreement that the Computer Company would not enter the music business.

      I also seem to recall that a large Seattle software company claimed a US trademark in the common English word for fenestration in spite of the fact that the word had been used in conjunction with and as part of the name of similar graphic computer interfaces. That particular claim seemed to be going down in flames when the large software company in Seattle dropped the claim before is was decided. They later made a similar claim in one of the Norther European countries which seemed to be more successful because it was an English word, not a word commonly used in the local language. I’m not sure if that was ever decided either.

  9. ” It seems, intuitively, absurd to think that someone could own trademark rights in a word that is not just a common word, but ‘The word,'”

    According to John and Paul, the word is “love”, whereas according to the Trashmen, “Bird” is the word. Has this 50-year-old conflict been resolved?

  10. I think the Commonwealth of Massachusetts should file an interference. We’ve already got THE College, THE Law School, THE Design School, THE Business School, and even THE Country Club!

  11. “T.H.E. Cat,” an NBC 1966-67 TV series about “the cases of a reformed cat-burglar turned bodyguard” starred Robert Loggia. It ran for 26 episodes. “T. H. E. Cat” was shortened “Thomas Hewitt Edward Cat.”

  12. It wasn’t until a couple years ago I realized that OSU was all worked up over the word “the.” I’m not sure I ever heard a reason for their obsession over it, and it makes no sense to me. I mean, when people ask students and alumni of my own college where we went, none of us ever says, “THE [with emphasis on that word, as though it’s the only one that matters] University of Connecticut.” We usually just say “UConn.” Works for us. Why doesn’t “Ohio State” work for them? One wonders.

  13. Curious, you mentioned not patenting the John Deere green. I remember a while back Louboutin Shoes got trademarked the red sole of their shoes. Was this just a Europe holding, does it have effect in the US?

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