Graduates of The Ohio State University (“Ohio State”) are familiar with fans and supporters (and sometimes, Michigan fans) placing an emphasis on the “THE” when saying the school’s name. But the United States Patent and Trademark Office’s (“USPTO”) recent decision1 to grant federal trademark registration No. 6,763,118 to Ohio State for the most popular word in the English language2 has garnered much mainstream media attention and confusion. This blog post provides a brief overview of the background and potential implications of this registration.
How did Ohio State register such a common word?
Ohio State first applied to register the word THE in 2019 in connection with Clothing, namely, t-shirts, baseball caps and hats3. The application was initially refused4 by the USPTO because: (1) a third-party clothing company had already filed an application for the word THE beforehand; and (2) because the mark was “merely ornamental” (in other words, the USPTO believed that THE did not function to indicate the source of Ohio State’s clothing goods). Ohio State eventually overcame those issues by submitting evidence and images to demonstrate that THE had source-indicating function, and by entering into a consent agreement with the third-party clothing company5. With these issues both resolved, and no additional refusals or challenges being raised, the USPTO granted a federal registration to Ohio State for THE on June 21, 2022, to many commentators’ surprise.
What does the registration protect, and what are the implications?
Ohio State’s registration for THE only covers the goods “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” in international Class 25. But the registration is “without claim to any particular font style, size or color,” meaning that Ohio State can technically claim it now has exclusive rights to display the word THE in any font, style, or color in a source-indicating manner on T-shirts, baseball caps, and hats that are distributed through certain sports and collegiate athletics channels of trade. Thus, while it is true that the registration is limited to certain clothing goods, its potentially expansive scope in terms of display rights leaves some commentators perplexed by the USPTO’s decision and questioning how, without something more, the word THE can have any real source-indicating function.
To illustrate the debate, a consumer encountering the word THE displayed on the front and tag of a shirt that also displays (i) a block “O”; (ii) an image of a buckeye; or (iii) scarlet and gray colors6 may quickly associate that shirt with Ohio State. But would consumers think of Ohio State if they encountered the word THE displayed on the front and tag of a plain white shirt sold in an online sports clothing store? Many commentators would say no, and therefore conclude that THE fails to function as a trademark on its own. Others would argue that Ohio State’s longtime use and emphasis of the word THE has created an association between that word and the school in the minds of consumers. Therefore, those commentators may claim that a third party who displays the word THE on a t-shirt sold through typical sports and collegiate athletics channels may confuse or mislead consumers into thinking that third party is affiliated or somehow connected to “THE” Ohio State University.
While commentators can (and will) debate the scope of the registration, it remains to be seen how Ohio State will enforce its rights in THE. Will Ohio State seek to prevent any other college athletics program from introducing their school’s name or mascot with the word THE on a T-shirt? Many commentators would argue that doing so would be an overly broad interpretation of the school’s rights. But on the flip side, is Ohio State likely to challenge third-party uses of THE only when used in conjunction with other Ohio State imagery or colors? Probably not, if Ohio State’s past enforcement efforts at the Trademark Trial and Appeal Board are any indication.7 It will be interesting to see how Ohio State approaches these efforts, and how a factfinder determines the scope of Ohio State’s rights in the word THE, should the opportunity arise.
 The federal registration issued by the USPTO can be viewed here: https://tsdr.uspto.gov/documentviewer?caseId=sn88571984&docId=ORC20220605021530#docIndex=0&page=1
 Is this the most powerful word in the English language? – BBC Culture https://www.bbc.com/culture/article/20200109-is-this-the-most-powerful-word-in-the-english-language#:~:text=The%20most%20commonly%2Dused%20word,not%20much%20to%20look%20at.
 The Ohio State University wants to trademark the word ‘the’ – The Washington Post https://www.washingtonpost.com/sports/2019/08/14/ohio-state-university-wants-trademark-its-favorite-word/
 The initial refusal of the application can be viewed here: https://tsdr.uspto.gov/documentviewer?caseId=sn88571984&docId=OOA20190911082303#docIndex=19&page=1
 The consent agreement can be viewed here: https://tsdr.uspto.gov/documentviewer?caseId=sn88571984&docId=ORC20220605021530#docIndex=15&page=8
 The block “O” refers to the O symbol used by Ohio State; a buckeye is Ohio’s state tree; and scarlet and gray are commonly recognized as Ohio State’s school colors.
 See Ohio State’s Trademark Trial and Appeal Board history here: https://ttabvue.uspto.gov/ttabvue/v?pnam=The%20Ohio%20State%20University%20%20