THE Ohio State University has learned that the Trademark Office cares about what is on the neck label and not what is on the front of the shirt.
If you ever watched an NFL football game and a former Buckeye introduces himself, he announces that he graduated from “THE Ohio State University” with a big emphasis on the “THE.”
In an attempt to cash in on THE branding, The Ohio State University filed an application to register its trademark for THE. The USPTO lists the following six benefits of registering a trademark:
- The trademark is listed in the USPTO database of registered and pending trademarks. This provides public notice to anyone searching for similar trademarks. They will see your trademark, the goods and services on your registration, the date you applied for trademark registration, and the date your trademark was registered.
- The legal presumption is that you own the trademark and have the right to use it. So, in federal court, your registration certificate proves ownership, eliminating the need for copious amounts of evidence.
- You can use your registration as a basis for filing for trademark protection in foreign countries.
- You have the right to bring a lawsuit concerning the trademark in federal court.
- You may use the federal trademark registration symbol, ®, with your trademark to show that you are registered with the USPTO. This may help deter others from using your trademark or one too similar to yours.
- You can record your registration with U.S. Customs and Border Protection (CBP). They can stop the importation of goods with an infringing trademark.
The examining attorney at the United States Patent and Trademark Office initially refused Ohio State’s application because it only included a specimen (i.e., a photo of a shirt) that merely had the word “THE” on its front. Trademark Office rules prohibit the registration of phrases and designs that are merely ornamental because they do not indicate the source of the good.
Ohio State University fought the ruling for three years. After OSU deleted the original specimen, changed the filing basis to Intent to Use, and filed a new specimen showing THE in the neck tag, the examining attorney finally approved the application.
In the end, Ohio State did not end up with the scope of protection that it originally wanted.
It is important to highlight that the Trademark Office cares about what is on the neck label or hang tag and not what is on the front of the garment. Furthermore, deeper scrutiny of the specimen and a discussion of the client’s goals may have saved the applicant several years of frustration.
Finally, the closer scrutiny of specimens is notable. The examining attorney in this case demonstrated the USPTO’s increased efforts to prevent bogus registrations by more closely scrutinizing specimens. The days of rubber stamping any specimen as acceptable are now over.
A trademark identifies the source of the goods. To register a mark, the trademark office requires the mark to be on the neck or on a hang tag. It doesn’t matter what is on the front because that is merely ornamental.
We found it interesting in this case that the word “THE” alone could be a brand. Consider the countless existing clothing trademarks using a phrase that includes “THE.” Here, the USPTO found that the word “THE” alone was distinctive enough. There is no likelihood of confusion existing between it and the other trademarks that use “THE” in a phrase.
Your company’s name is one of its most important assets. Fortunately, there are steps you can take now to protect it and ensure future growth continues! Particularly in the clothing industry, time spent with an attorney before filing can save years of frustration and expense.
Contact us today for a consultation, and let us show you how we can help protect your greatest asset.