Can you register THE as a trade mark?
Can you register THE in relation to clothing as a trade mark in the United States?
After nearly three years of trying, Ohio State University the USPTO granted the university a registration for the THE in relation to a limited list of goods including “t-shirts, baseball caps and hats” in class 25.
The USPTO examiner had originally objected to the mark on the basis that it would be viewed as a decorative ornamental feature, rather than an indication of source. But Ohio State’s counsel successfully argued that THE is an important part of the applicant’s identity and filed a specimen showing the mark on a label inside a t-shirt.
The mark was published for opposition and then registered on 21 June 2022.
Meanwhile, Marc Jacobs has also filed a trade mark application for THE in class 25, which has run up against similar objections. The application is still pending, after the USPTO published a notice of allowance in October 2021. Even if the Marc Jacobs mark is published it runs the risk of a potential opposition.
The UKIPO approach
Could a similar application succeed at the UK IPO? A quick search of the UK register indicates that there have been 10 attempts to register THE in class 25 to date.
However, only two of these are valid marks, and both include other elements.
One, filed by Basso Francesca, is a figurative mark (pictured). It was registered for goods in classes 18 and 25 in 2010.
The other is a word mark for "THE…" filed by Jamie Huggins and Wayne Francis for “wearable garments and clothing, namely, shirts” in class 25.
Two further THE applications, both with figurative elements, were registered in class 25 but have since expired.
It is not surprising that it has been hard to register THE in the UK, as there are clear public policy reasons not to give a monopoly in a standard word such as the definite article.
The willingness of the USPTO to grant the Ohio State application and its consideration of the Marc Jacobs application is indicative of the differing approaches to distinctive character across the Atlantic.
It will be interesting to see how the THE trade marks are used and whether they are maintained. From many practical commercial perspectives, not least SEO, it may not be the most valuable mark for the longer term.