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Wednesday, August 21, 2019

THE Volokh Conspiracy keeps you up-to-date on THE Trademark System

By David Post - August 21, 2019 at 09:05AM

A couple of years ago, I wrote about [here] a simmering trademark dispute between OSU (Oregon State Univ.), OSU (Oklahoma State University), and OSU (the university known as "The Ohio State University") over the right to use the "OSU" brand on t-shirts, mugs, hats, etc.

From the ridiculous to the sublime: As reported first by trademark attorney Josh Gergen (here) and confirmed by university officials, OSU-Columbus—i.e., The Ohio State University—has filed a trademark application on the word "The."  [Its application is #88571984, if you want to navigate the Trademark Office's terribly antiquated searchable database to see it for yourself].

Apparently, OSU-Columbus sells hats, mugs, t-shirts, etc. with "THE"—nothing more, just "THE"—splashed prominently across the front (see the video, which has examples of the branded merchandise), and they want the right to stop others from doing so—at least, from doing so in a manner "likely to cause confusion" among consumers.

It's a tricky little trademark question, and I'm not at all sure whether the Trademark Office will grant the application.  It seems, intuitively, absurd to think that someone could own trademark rights in a word that is not just a common word, but "The word," the most common word in the language.  But on the other hand, it's not clear which, if any, exception to trademarkability would apply to support a rejection of the application, and it may well get through.

There is an important "functionality" doctrine in trademark law, which declares that "functional" features of a product—features that affect the cost or quality of the product, or those which competitors may need to use for reasons having nothing to do with trademark law—can't be the subject of trademark protection; John Deere would not receive trademark protection for the distinctive green color of its products if that color somehow affected the performance of the machines (it doesn't).  There may be a way to argue that the "The" qualifier similarly needs to be available to competitors, i.e. other institutions that want to demonstrate their supposedly unique status:  not just any University of Michigan but THE University of Michigan (ouch!), not just any National Rifle Association but THE National Rifle Association, etc. [And not just any Volokh Conspiracy, but The Volokh Conspiracy? Would consumers be confused by the VC's new line of "THE" mugs, coming this Christmas?]

 


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