Picture credit: Gaelen Morse / Getty Images
By Chase Nevitt, Vol. 21 Staff Writer
In the summer of 2022, Ohio State University won a somewhat humorous legal battle over its desire to trademark the famous definite article used throughout the English language. The USPTO officially approved the university’s application to trademark “THE” following a two-year dispute over the university’s initial application filing involving the word.
Yes, you read that right; the word “THE” has had its rights relinquished to that of an entity, as approved by the United States Patent and Trademark Office (USPTO). At first, one might think: “how can such a popular word give someone else heightened protections in using the word?” In effect, isn’t this chilling speech and infringing on a person’s first amendment rights? However, this USPTO decision does not infringe on the First Amendment rights of the public, it just limits the word’s usage in the context of the collegiate athletic apparel space.
Why “THE” Ohio State?
For those not well connected with the famous lore of American universities and college sports, fans have come to recognize that the word “THE” and Ohio State as synonymous. This connection has been popularized by the trend of former Ohio State sports players introducing themselves as having attended “THE Ohio State University.” However, the word’s history with the university dates back to 1986 when the school got rid of its old “OSU” symbol. In doing so the school wanted to separate itself from other “OSU’s” like Oregon State University and Oklahoma State University. As a result, university officials set their sights on adopting the “THE”. In retrospect, those officials would likely be proud of the university’s efforts to cement the school’s relationship with the word via trademark registration.
Using the extra protection afforded by the trademark, Ohio State will probably increase its use of the word alongside university athletic wear. However, this is the extent to which Ohio State’s protections go. The university does not have the means to control the use of the word generally, but rather the use of the word in connection with college athletic apparel.
THE Ohio State vs. THE USPTO feat. the First Amendment
The USPTO initially refused to register “THE”, citing its ornamental and decorative nature as applied to the displays that Ohio State submitted. However, the university eventually overcame the refusal and changed the mind of the USPTO. This leads to an age-old question: what are the First Amendment implications on this issue?
Trademark law is carefully constructed to protect First Amendment rights. In general, trademark protections, while limiting to some, open the door for further creation by the person holding the trademark. Each trademark is granted to specific “classes” of goods and services, and applicants must show that they are using or intend to use the mark for each class.
First Amendment law does not provide immunity from trademark infringement and misappropriation. However, the First Amendment sometimes does win when it comes down to a third party’s use of the registered word, phrase, or logo. In the USPTO’s original finding on the application, they found that there would be a “likelihood of confusion” between Ohio State’s use of “THE” and another application for the word made by fashion designer Marc Jacobs. Jacobs and the university’s discussions eventually led to an agreement enabling both parties to use the licensing. In effect this meant that, according to USPTO’s original finding on the issue, there would no longer be a likelihood of confusion between the two parties.
It is easy to quickly conclude that an entity shouldn’t be able to have rights to such a common word or phrase. However, as the Trademark Manuel of Examining Procedure explains, a widely used phrase or term must go beyond a person’s generally understanding of the term and rather point to the source of the good or service. For example, the USPTO refused to register the phrase “ONCE A MARINE, ALWAYS A MARINE”, citing that it was a common motto used amongst the marine community that had been around for years and was not traceable to the source. Further, “the size, location, dominance and significance of the alleged mark as applied to the goods” are all analyzed in connection with the goods or services in determining if the mark lends to the source of the said good, rather than just being a common message.
Here, the USPTO likely reasoned that the “THE” had reached a level of source identification in the context of colleges and universities. In the end, Ohio State is not actually taking away other people’s rights to using the word “the” in a general sense. It is simply giving the university the rights to the word in the college apparel space. For example, the University of Florida would likely face legal action from Ohio State if they came out with a shirt with prominent characters noting that it was “THE University of Florida.” Further, this space already contains license restrictions owned by each individual university. In effect, there is no compounding chilling effect on speech.
As shown here, if it is a common phrase, the registration will likely only cover a very narrow allowable scope. As a result, even the strongest proponents of speech protection are likely not going to be unnerved by this decision.