The Battle to Trademark “THE”

Catherine S. Yao
Associate, Corporate Department
Published: New Hampshire Business Review
June 4, 2021
Image of Intellectual Property box

In late April, fashion brand Marc Jacobs and The Ohio State University (OSU) called a truce in their battle over the trademark “THE.”  Marc Jacobs filed an intent-to-use (ITU) application with the US Patent and Trademark Office (USPTO) for its “THE” mark in May 2019, for use on various clothing and handbag goods and accessories.  In August 2019, OSU filed an application for its “THE” mark, for use on various clothing goods and accessories, claiming dates of first use going back to August 2005.  OSU ultimately filed an opposition  against Marc Jacobs’ application with the Trademark Trial and Appeal Board in April 2021.  Alongside a summary of OSU’s history and use of “THE” as part of the school’s name and as a trademark, OSU’s filing noted that the parties had already executed a Consent to Registration Agreement (whereby each party consented to registration of the other party’s mark/application) and filed amendments to the identification of goods in the respective applications.

While this dispute may serve as a reminder of the critical distinction between priority of use and priority of application, perhaps another notable question pertains to the right of any person or entity to register a trademark (also referred to as a “mark”) for such a common word.  Before diving further into more substantive discussion, it’s helpful to review certain principles of trademark law in the United States, starting with this vital premise: trademarks are not monopolies.  For example, a trademark registration granted for the word “THE” would not preclude everybody else from using the word “the” in any context or in connection with any and all goods/services.  Trademarks are source-identifiers for goods/services and trademark rights are tied to the goods/services with which the mark is used.  In determining whether an existing trademark registration might bar registration of a later application, the question is whether there is a “likelihood of confusion,” i.e., whether a consumer would be confused as to the source or sponsorship of the goods/services offered under the respective marks, because of the marks used thereon.

Turning to the issue of priority of application versus priority of use, in the case of Marc Jacobs and OSU, despite claiming use predating Marc Jacobs’ application filing date, the fact remained that OSU’s application was filed after the filing Marc Jacobs’ application.  In the United States, trademark rights typically go to the first user of a mark; however, the intent-to-use filing basis effectively creates an exception to this rule with the USPTO.  Indeed, OSU’s application was initially suspended in April 2020, pending the outcome of the Marc Jacobs’ application.  The reason for this is that trademark applications are examined based on their filing dates (including ITU applications) and not on the dates of first use claimed therein.  As such, waiting to file an application carries the inherent risk that someone else may file an application for the same or similar mark for overlapping goods/services first, putting them ahead in line for examination.  Should the earlier application be allowed/published for opposition, any junior filers unable to otherwise overcome a likelihood of confusion refusal via argument would carry the burden of opposing the application or cancelling the registration to clear the path.

Marc Jacobs and OSU appear to have agreed that, due to the manner of use and other circumstances related to each parties’ use of the respective “THE” marks, no likelihood of confusion exists.  Each party has also filed an amendment to clarify its channel of trade and target customer base.  In particular, Marc Jacobs added language referring to “channels customary to the field of contemporary fashion,” to each identification of goods in its application, and OSU added language referring to “channels customary to the field of sports and collegiate athletics,” to the identification of goods in its application.

Notably, despite reaching a consent agreement, OSU’s opposition was filed in the event that the USPTO examining attorney took issue with the agreement.  While consent agreements are not uncommon and often highly effective in overcoming a likelihood of confusion refusal, there remains a risk that a USPTO examining attorney might deem an agreement a “naked consent agreement.”  As such, any consent agreement should set forth sufficiently detailed reasoning and evidence in support of the parties’ position that there is no likelihood of confusion and, where possible, language regarding future efforts by each party to prevent/address confusion.

Here, as each party’s application and the opposition proceeding remain pending, the official outcome remains to be seen.