Back
Back
Back
Back
Back
Back
Back
Back
Back
Back
Back
Back
Back
Back
Back
Back
Back

The Battle to Trademark “THE”

Written by: Catherine S. Yao

Published in NH Business Review (6/4/2021)

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.

Integrity and trust

At McLane Middleton we establish and maintain long-standing relationships with our clients to help us better achieve their unique goals over time. This approach to building trust requires that our esteemed lawyers and professionals use their broad, in-depth knowledge and work together with integrity to ascertain sound resolutions to legal matters for their clients.

Strength in numbers

McLane Middleton is made up of more than 105 attorneys who represent a broad range of clients throughout the region, delivering customized solutions. As a firm we are recognized as having the highest legal ability rating. The firm is rated Preeminent by Martindale Hubbell and is recognized as one of the nation's leading law firms in Chambers USA. Our attorneys are distinguished leaders in their respective practice areas.

Meet Our People

Commitment and collaboration

McLane Middleton's versatile group of attorneys and paralegals become trusted authorities on each case through collaboration. We work with our clients to learn their individual needs first and foremost and, together, we develop comprehensive solutions to their specific legal matters. This approach helps us exceed our clients' expectations efficiently and effectively, client by client, case by case.

Practice Areas

A history of excellence

McLane Middleton was established in 1919 in New Hampshire, and has five offices across two states. However, deep historical roots don't allow you to become innate. Our firm is organized, technological, and knowledgeable. Our history means we are recognized. But our reputation is built on the highest quality of service and experience in very specific areas of law.

The Firm

Intelligence paired with action

Our team continuously seeks opportunities to enhance their professional development and put key learnings to action. The pursuit of further insight guides us to volunteer service opportunities, speaking engagements, and teaching roles. Our lawyers are sought after thought leaders across their industries, and recipients of leadership awards throughout the region.