Why Marc Jacobs and Ohio State both fought to drop the word “the”

The is one of the most common words in the English language. But two separate entities want consumers to associate them with the word.

Fashion designer Marc Jacobs and Ohio State University separately filed petitions with the U.S. Patent and Trademark Office in 2019 to file ‘the’, which would allow them to affix it to merchandise such as t-shirts and bags, and to forbid anyone to do so. This week, the USPTO granted the trademark to the university, and while it may seem ridiculous to try to trademark such a common word, experts say it’s actually a smart trademark.

In some ways, the whole concept of sticking “THE” on a shirt started out as a joke. In 1986, Ohio State University wanted to move away from the acronym OSU because it is also used by Oregon State University and Oklahoma State University, causing a lot of confusion. So the school tried to rename itself The Ohio State University in a tongue-in-cheek way, encouraging others to do the same.

In the mid-1990s, athletes and alumni used the item the with reference to the State of Ohio; NFL players have used the term on TV shows; and Saturday Night Live the parody. For the past few years, in the latest iteration of the joke, people have simply used “LE” to refer to school, including on T-shirts.

[Images: USPTO]

Meanwhile, something similar was playing out in the fashion world. Clothing company Marc Jacobs started using the word The on various products, including “The Tote Bag” and “The Backpack”. It was also designed to be a humorous form of branding, pairing a definite item with a generic product. Over time, some Marc Jacobs photo shoots had models wearing sweaters with “THE” on them.

“It’s about two brands experimenting with language to set themselves apart,” says Alexandra J. Roberts, a professor at the University of New Hampshire School of Law who specializes in trademark law. “These approaches are ironic, irreverent and humorous. They think outside the box a bit, trying to expand the set of things people associate with the brand.

In 2019, Ohio State University and Marc Jacobs each wanted to codify their relationship to the word. Marc Jacobs filed the USPTO application for “The” trademark, and soon after, Ohio State University did the same. This week, the university obtained the trademark. But Roberts says the USPTO is particularly concerned about preventing consumer confusion, so he says the university must use the word in such a way that consumers understand it’s an official part of the brand image. In this case, that might mean putting “LE” on a shirt tag or price tag to make it clear that it’s more than just a cute saying. “The brand appeal is that people see the symbol or the word and associate it with a single source or brand,” she says.

While it’s a big win for Ohio State to receive the mark, ESPN points out that it may not be the only university that will be able to use “THE” on apparel. During the first five years of a trademark being registered, other parties may request its cancellation on the grounds that it does not yet function as a trademark.

And Marc Jacobs, for his part, can still get a trademark for the word, Roberts says, since the application is still pending. For the past three years, the company and the university have chosen not to fight over the word, but rather to work together — and with the USPTO — so they can each use it. The key is for them to use the mark differently enough that the consumer cannot confuse an Ohio State University product with a Marc Jacobs product.

“The two brands could co-exist,” Roberts says, pointing out that there are many brands with the same name, like Yale University and Yale Locks. “But it would be a lot easier to imagine them coexisting if Marc Jacobs had the handbags brand, and the university had the shirts and hats brand.”

Roberts says the “THE” brand is an example of a smart brand that also creates new associations in the minds of consumers. “By trademarking ‘THE’, they are creating a derivative brand,” she says. “It means there are even more ways for consumers to identify with the brand. By formalizing their speech protection, no one else can do something similar.

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