Yet another reason that that trademark application will get refused

(Update:  Just as predicted, the Examining Attorney has refused registration in view of this earlier trademark application.  You can see the update here.)

Earlier today I wrote a blog article about a trademark application that had been filed by Ohio State University for the word “the”.  I predicted that it would get refused as “merely ornamental”.  But alert reader Edward Weller drew my attention to an earlier trademark application in which someone else also seeks trademark protection for the word “the”.  You can see the TSDR record here.

This earlier trademark application was filed by a Marc Jacobs Trademarks, L.L.C. which I guess is connected with well-known fashion designer Marc Jacobs.  The two applications have identical marks and both list clothing among the identified goods.  It is thus very predictable that in the Ohio State University application, the Examining Attorney will refuse registration based upon a likelihood of confusion with respect to the Marc Jacobs application.  Indeed the Examining Attorney might take the easy way out and simply suspend the OSU application pending the disposition of the Marc Jacobs application.

As of July 24, 2019, the Marc Jacobs application was on its way toward being published for opposition.  But on August 6, some nameless person at the USPTO yanked it from the publication pipeline for “further review”.  It will be interesting to see what happens next in this “further review”. 

When a “further review” like this happens, sometimes what happens next is nothing at all.  The application just gets injected back into the publication pipeline, and nothing that is publicly visible in the file ever explains why the case got yanked or why it got returned to the pipeline.

In other “further review” cases, what happens next is the case gets kicked back to the Examining Attorney and a new Office Action gets mailed, raising some new issue or ground for refusal.

Anyway, yes I predict the OSU application will receive a suspension pending the disposition of the Marc Jacobs application.

Update:  The Marc Jacobs application has indeed been pulled from publication and now faces an Office Action because the drawing fails to match the specimen (or vice versa).  I imagine both of these pending applications where the mark is the word “the” will get a second and third and fourth pair of eyes from now on, each time anybody at the USPTO touches the file.

3 Replies to “Yet another reason that that trademark application will get refused”

  1. “It is thus very predictable that in the THE Ohio State University application….” (For some reason, the preferred usage has not caught on. TOSU needs more branding. Perhaps T-shirts and hats.)

    How do alumni of The Cooper Union feel about this?

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