This is the second part of series of posts in which I look at Office Actions that were issued for set of trademark applications for three trademark that were filed by well-known individuals or organizations last year. The subject of this post is a trademark for the term “The,” which was filed by The Ohio State University.

The Ohio State University made national news in the latter half of 2019 when several reporters noticed that the university was seeking to register the word mark “THE” in association with various types of university merchandise, specifically t-shirts, baseball caps and hats. An application for that mark was filed on Aug. 8, 2019.

An Office Action was issued on Sept. 11, 2019, in which the attorney who was examining the trademark application rejected the application. The examining attorney identified two grounds for the rejection.

First, the examining attorney found that another entity, Marc Jacobs Trademarks, L.L.C., filed a trademark application directed to the word mark “THE” for related goods approximately three months before the university. 

This earlier-filed application has also been rejected, so that it is possible that this application will be abandoned before the prosecution of the university’s application is complete. If that were to happen, then the examining attorney would have to withdraw this basis for rejecting the application.

Second, the examining attorney found that the specimen that the university submitted with the application depicted the mark in an ornamental fashion, rather than as a source identifier. The specimen depicted the word “the” on a shirt that was “located directly on the upper-center area of the front of the shirt and the front portion of the hat, where ornamental elements often appear.”

The examining attorney reasoned that the mark was ornamental because:

With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. See TMEP §1202.03(a). Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt. See In re Pro-Line Corp., 28 USPQ2d [1141, 1142 (TTAB 1993)]; In re Dimitri’s Inc., 9 USPQ2d 1666, 1667-68 (TTAB 1988); TMEP §1202.03(a), (b), (f)(i), (f)(ii).

Unfortunately, this rejection could have avoided with a little planning. The university could have placed the mark on a hang tag or on another type of clothing tag that was attached to the item and attempted to sell that item in its stores. Once one of those clothing items had been sold, a photograph of that item could have been submitted as a specimen.

The university may have sold such items already, so it is possible that this rejection may be overcome by submitting a substitute specimen. The university must respond to this Office Action by March 11, 2020.