Readers will recall my blog articles here and here and here about Ohio State University’s ill-fated attempt to obtain a trademark registration for the word “the”. Now there is an Office Action which you can see here.
As I predicted, the Examining Attorney refused registration because the specimens of use show the mark as “merely ornamental”.
And as I also predicted, the Examining Attorney also refused registration in view of the earlier trademark filing by clothing designer Marc Jacobs.
I also noted that some trademark applicants are more equal than others — while the vast majority of trademark applicants have to wait three months or more to receive an Office Action, Ohio State University received its Office Action a mere five weeks after filing day.
Mr. Jacobs’ trademark application seems to have gotten recent extra scrutiny from the Trademark Office as well. Back on July 24, 2019 it was smooth sailing for Mr. Jacobs. The Examining Attorney had approved his application to be published for opposition, and then the “final review prior to publication” also took place without any problem being identified.
But then on August 6, just as all of this started hitting the popular press, some nameless person at the USPTO yanked Mr. Jacobs’ application from the publication pipeline and kicked it back to the Examining Attorney. The Examining Attorney, it seems, made a mistake when examining the application and failed to notice a “failure to match” as between the mark as shown in the drawing, on the one hand, and the mark as shown in the specimens, on the the other hand. The “final review” person also made the same mistake by failing to notice that the Examining Attorney had made this mistake. Now on August 28, 2019 the Examining Attorney has corrected the previous mistake, now refusing registration because:
In this case, the specimen displays the mark as THE BACKPACK MARC JACOBS or THE VELVETEEN JEAN JACKET MARC JACOBS. However, the drawing displays the mark as THE. The mark on the specimen and in the drawing do not match because the mark on the drawing is only a portion of the mark appearing on the specimen.
So now Mr. Jacobs will have to try to fix this. One possibility is that he might hand in new specimens of use. He would need to make sure that on those new specimens, the mark is not “merely ornamental”. Another possibility, of course, is that he might amend to an “intent to use” filing basis.
If and when Mr. Jacobs overcomes this difficulty, the case would get published for opposition. It is rather predictable that what would happen next is Ohio State University would oppose on the grounds of seniority. OSU claims a DOFU (date of first use) in 2005, which is of course earlier than Mr. Jacobs’ claimed DOFU in 2018.