IP News

This case draws attention to one common drawback of state trademark registries, and the process of securing state trademark registrations: there is often no comprehensive search available (or completed) before a state trademark registration is filed and granted. This fact causes both defensive and offensive problems for established trademark holders. Penn State certainly was not amused by Parshall's tactics, and characterized Parshall's behavior as "willful", the case as "exceptional", and is seeking his profits, treble damages, and attorneys' fees under 15 U.S.C. §1117(a). Id. at 23.

*****

Can OSU Trademark the Word "The"?

On Aug. 8, 2019 in a move that surprised many people (within and without the state of Ohio) The Ohio State University (OSU) filed a trademark application for the word "THE" in connection with "Clothing, namely, t-shirts, baseball caps and hats" in International Class 025. Ser. No. 88/571984. "The" story goes that The Ohio State University wishes to be formally known as THE Ohio State University (emphasis added), as opposed to the more humble OSU or Ohio State University. In an effort to rebrand, and emphasize the desired moniker, the school has created t-shirts, hats, and other merchandise proudly displaying the word "THE" in all capital letters. As part of the campaign and corresponding attempts to confirm the brand, it filed a federal trademark application. See, TSDR Report for "THE", Ser. No. 88/571984 (the OSU Application). Claiming first use in August 2005, the specimen of use was comprised of a screenshot from OSU's official team store. The specimen showed a tee shirt for sale with the word "THE" emblazoned across the front of the shirt, with the OSU logo immediately below it.

On Sept. 11, 2019 the Examiner for the OSU Application issued a non-final office action, citing two main barriers to registration. The first was an application filed by Marc Jacobs Trademarks, L.L.C. on May 6, 2019 in International Classes 18 and 25 for the trademark THE, which the Examiner indicated had priority over the OSU Application. See, TSDR Report for "THE", Ser. No. 88/416806 (the Marc Jacobs Application). The Marc Jacobs Application also has a pending office action issued against it, because the Examiner for that application believes that the specimens of record do not match the drawing. In the view of the Examiner, the two specimens of record, one for a jacket with the label, THE VELVETEEN JEAN JACKET MARC JACOBS, and the second, a bookbag with the label THE BACKPACK MARC JACOBS, differ from the drawing for the mark, which is for the word "THE" alone. Should the applicant in this instance overcome the denial and its application mature into a registration, it may serve as a barrier to the OSU Application. Marc Jacobs has until Feb. 28, 2019 to respond to the office action.

The second issue that the Examiner identified in the OSU Application was that the specimen of record was merely a decorative or ornamental feature of the clothing, and did not function as a trademark. In these cases, the size and location of the alleged mark are significant, and here it was not clear to the Examiner that the mark was being used in a trademark fashion because of its prominent placement and size in relation to the overall design of the shirt. OSU has until March 11, 2019 to respond.

Fans of the free and unrestricted use of grammatical articles, and the public at large, were largely puzzled that not just one, but two entities would seek to obtain a trademark registration for the word "THE". However, neither office's action is final, and it will be interesting to see if either applicant, or perhaps both, can overcome their respective denials. OSU is no stranger to branding battles, having previously entered into a consent and co-existence agreement with Oklahoma State University for use of the acronym OSU in connection with Class 25 goods, after The Board of Regents for Oklahoma State University filed an extension of time to oppose OSU's trademark application, now registration, for the acronym in 2017. See, TSDR Report for Reg. No. 5,358,397. It could be that the Office Action against OSU's THE application is the first step in a larger discussion with Marc Jacobs.

From the wide swath of licensed merchandise available at any university bookstore, it is clear that trademark rights are exceptionally valuable assets for institutions of higher education, and many take extensive steps to enforce their rights, including the filing and maintenance of a robust portfolio of trademarks. They do so for offensive reasons (to prevent others from capitalizing on their goodwill), and also defensive reasons (to have an objective statement and recognition of their rights or conversely lack thereof from the USPTO). From oppositions to federal lawsuits and forceful trademark use guidelines, schools take great care to obtain, protect, and enforce their rights. As these two matters move forward, it will be interesting to see if OSU is able to overcome the denial of its application, and if the Middle District will recognize Parshall's behavior as "exceptional" or "willful." While "exceptional" cases are rare, Penn State characterizes Parshall as a serial infringer, so more schools may come forward with their own suits or other legal action now that Penn State has attempted to teach him a legal lesson.

*****

Howard J. Shire is Editor-in-Chief of this newsletter and a Partner in the New York office of Pepper Hamilton LLP. He can be reached at [email protected]. Christine E. Weller is a staff attorney in the Intellectual Property Department of Pepper Hamilton LLP, resident in the Philadelphia office.