A trademark application that will get refused

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(Update:  Yes, as I predicted the Examining Attorney has refused registration because the “the” is “merely ornamental”.  You can see this blog article with an update.)

It is all over the news that Ohio State University has filed a trademark application for the word “the”.  I predict that the USPTO will mail an Office Action refusing registration in this trademark application.  Here’s why.

When you file a US trademark application, you can follow any of several paths.  One path is to say that the trademark is “in use” in commerce in the United States.  If you choose that path, then your trademark application is required to include at least one “specimen of use”.  A typical specimen of use will be a photograph of the goods showing the trademark appearing upon the goods.  

Here is the TSDR page for this US trademark application.  As you can see, Ohio State University did choose the use-based path.  In its trademark application, the university provided two specimens of use, excerpted here.  One specimen is the T-shirt quoted above, with the word “THE” prominently displayed on the front of the shirt.  The other specimen is a baseball cap, quoted at right, again having the word “THE” prominently displayed on the front of the cap.

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Under US trademark law, subject matter that is merely a decorative feature does not identify and distinguish the applicant’s goods and, thus, does not function as a trademark. A decorative feature may include words, designs, slogans, or trade dress. When an applicant files a trademark application presenting such subject matter, it is extremely predictable that the Examining Attorney will refuse registration because the feature is merely ornamentation and, therefore, does not function as a trademark.

I predict that this is what will happen in this trademark application, unless the university amends the application within the next few weeks to change the specimens of use to something else.  

This big-mark-on-the-front-of-a-T-shirt mistake is such a frequently made mistake by filers of US trademark applications that the USPTO has a web page specifically directed to this mistake.  The page says:

For example, a slogan prominently displayed on the front of a t-shirt may be considered merely ornamental use and not trademark use.

The Examining Attorney might also find some other reason to refuse registration, in addition to the “merely ornamental” reason.  I’m guessing the Examining Attorney might point to the fact that the word “the” is the most commonly used word in the English language, as part of some other stated grounds for refusal to register.

What do you think about this trademark application?  Please post a comment below.

7 thoughts on “A trademark application that will get refused

  1. I think this application tells us everything we need to know about OSU, in case you missed any of the other ample opportunities to form an opinion. Excellent way to kick off the College Football season though!

  2. Ornamentality will be an issue with these specimens, but don’t forget about secondary source, and this issue is fixable. The far bigger problem will be failure to function. Likelihood of confusion may also play in with marks like “The U”.

  3. What if the image that is used as the mark is full size on the back of the t-shirt and much smaller on the front (e.g on the pocket), does anyone think that would be a problem?

  4. Pingback: Yet another reason that that trademark application will get refused - Ant-like Persistence

  5. Pingback: Some US trademark applicants are more equal than others - Ant-like Persistence

  6. Pingback: Ohio State University's trademark application fares poorly - Ant-like Persistence

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