THE Ohio State University Loses Its Trademark Application For 'THE'

from the THE-end dept

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.

Filed Under: colleges, the, trademark
Companies: ohio state

Even Kirk Herbstreit Thinks THE Ohio State Is Being THE Silliest With Its 'THE' Trademark Application

from the touchdown dept

A few weeks back, we talked about the dumbest trademark application I've ever seen, with the Ohio State University deciding to try to get a trademark on one of the most commonly used determiners in the English language: "The." Honestly, the whole thing is painfully stupid, as trademarking such a common word cannot possibly be worked into the original purpose of trademark law, but here we are. The only good thing thus far to come out of all of this was the University of Michigan's playful suggestion that maybe it should trademark the word "Of."

Fortunately, it wasn't just us IP nerds who found all of this so silly. The public reaction writ large was fairly negative, with plenty of fun being had at the temerity of OSU. But what about OSU fans themselves? How would they react, given that all of this is built on the haughty insistence of NFL players emphasizing the "the" when announcing what school they attended?

Well, Kirk Herbstreit is a useful thermometer for this, given that he is both probably college football's most recognized analyst and a former OSU football player. And, man, does he not have kind words for his alma mater.

College GameDay analyst Kirk Herbstreit, who played quarterback for the Buckeyes in the 1990s, was the subject of an interview with For The Win this week. He was asked about the whole trademark situation. He did not hold back.

"I've never really bought into that. My dad played at Ohio State, my dad coached with Woody Hayes. Ohio State’s always been Ohio State. I have a diploma that I’m looking at right now, and it says, “The” — T-H-E — Ohio State University, and nobody’s called it “The” Ohio State University, ever, as I grew up in the ‘70s, ‘80s and ‘90s. And then one night on Monday Night Football — I don’t remember who the player was but he said, “The Ohio State University,” and it stuck. And from that point on, all the fans and everybody started saying “The,” “The,” “The.” To me, it’s Ohio State — always has been, always will be. I think it’s kind of ridiculous, the whole “The” thing.

It comes across to me as very arrogant. I’m just not a fan of it. I didn’t grow up with it. Nobody’s more Ohio State than me, and I never heard it. I never heard “The” in my life until maybe about 15 years ago."

Yeah, all of that. But when this move is getting this kind of reaction from someone like Herbstreit, you really have to start to wonder just what OSU is doing in keeping any of this up. It's a trademark that should, and probably will, be rejected for lacking originality and being too generic. It's a trademark that, by its nature, can't possibly be all that valuable even if granted. And it's apparently at best making the school look quite arrogant, if not creating outright anger, even among Ohio State fans.

It's time to realize this play isn't working and abandon it. It's the smart thing to do.

Filed Under: kirk herbstreit, the, trademark
Companies: ohio state