Lewis Roca Blog

On June 21, 2022, The Ohio State University (OSU) obtained a federal trademark registration (U.S. Reg. No. 6,763,118) for the standard character mark THE for “t-shirts, baseball caps, and hats; all of the foregoing being promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics.”

The case’s history provides a reminder to trademark applicants for how:

1. a trademark application may be refused registration due to a clothing specimen allegedly showing the mark as a merely ornamental feature of the applicant’s goods; and
2. a consent agreement and a clarification of trade channels identified in an application may be used to overcome a suspension.

FIG. 1—The examining attorney for U.S. Trademark Application Serial No. 88,571,984 refused registration of THE for t-shirts and hats based on OSU’s originally submitted specimen of use (above left), causing OSU to submit a new specimen of use (above right).

Merely Ornamental Subject Matter Does Not Function as a Trademark.

Subject matter that is merely ornamental and, therefore, does not serve a source-identifying function is not eligible for trademark registration.

The USPTO examining attorney in OSU’s case determined that consumers would perceive the applied-for mark, THE, as depicted in OSU’s originally submitted specimen of use (see FIG. 1), as merely ornamental because the mark was centrally located on the front of a shirt in a large size that dominated the overall appearance of the shirt.

OSU argued that THE, when used for clothing, served as an indicator of secondary source and sponsorship because OSU is a provider of educational and athletic services, not a clothing manufacturer. However, the examining attorney maintained the refusal because OSU had not shown that “THE, on its own, serves as a source indicator.”

To overcome the refusal, OSU amended its application filing basis from Section 1(a) (use in commerce basis) to Section 1(b) (intent-to-use basis) and submitted a new specimen of use showing the mark used as a label, where shirt trademarks are commonly found (see FIG. 1).

Consent Agreements May Overcome a Suspension.

Additionally, the examining attorney suspended action on OSU’s application due to a likelihood of confusion with an earlier-filed, co-pending application from fashion brand Marc Jacobs for THE for bags and clothing, including t-shirts and hats (U.S. Application Serial No. 88,416,806).

Ultimately, the examining attorney determined that (i) a five-page consent agreement between OSU and Marc Jacobs Trademarks, LLC (MJT) and (ii) amendments to the identifications in the two parties’ co-pending applications were sufficient for the suspension of OSU’s application to be removed. 

OSU and MJT discussed the matter and agreed that their respective trade channels were distinguishable. Therefore, OSU amended its mark’s identification of goods to state, in relevant part (emphasis added), “all of the foregoing being promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics.”

MJT amended its mark’s identification of goods to state, in relevant part (emphasis added), “all of the foregoing being promoted, distributed, and sold through channels customary to the field of contemporary fashion.”

In summation, clothing trademark applicants should consider using their applied-for mark as a hangtag or a commonly-located label for the goods to avoid costly arguments.

Further, if a trademark application is suspended for a potential likelihood of confusion with an earlier-filed, co-pending trademark application, and the trade channels are distinguishable, trademark applicants should consider discussing how to memorialize that distinction with the other side.

For more information, please contact Greg Lampert at glamper@lewisroca.com or Kurt Prange at kprange@lewisroca.com.