There are many types of words and symbols that the USPTO is obliged to exclude from registration as trademarks, including those that are merely descriptive of the applicant’s goods and/or services and those that otherwise simply fail to indicate to consumers that the goods or services identified by the mark are associated with a particular source. 

Regarding the such failures, the Trademark Trial and Appeals Board (TTAB) has put it bluntly: “It is well-settled that not every designation that is placed or used on a product necessarily functions as a trademark and not every designation adopted with the intention that it perform a trademark function necessarily does so.” The TTAB made that pronouncement in a decision to cancel a registration owned by Christian Faith Fellowship Church for the words “add a zero” as a mark for shirts and caps, because the challenger, adidas AG, showed that the Church – and others – used that phrase in a common way in connection with fundraising campaigns, to encourage donors to increase their donations, rather than to signal that the Church was the sole source of caps and shirts bearing the mark. “The more commonly a phrase is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark.”

Other examples of words and expressions that failed to rise above common usage include slogans such as THINK GREEN for weather stripping and paper products; MAMA BEAR for shirts; DRIVE SAFELY for cars.

In those branding failures, the common usage of the claimed words on the goods defeated any impression that those words identify a single provider for goods labeled that way; in other words, common usage make the words fail to function as a mark.

Understood that way, it would seem audacious for anyone attempt to register the single most common word in the English language for their own exclusive use in connection with any specific product or service. (For the record, according to Wikipedia, the word “THE” tops the list of the most common words in the English language under two different ranking systems.) An investigation was called for, and an informal online search of UPSTO records revealed six pending applications, and eleven registrations for THE marks for use as mark for hardware, hair care products, cell phone chargers, refrigerating cabinets, e-books and educational services. There are also twenty-two abandoned or cancelled registrations and applications.

I tip my hat to the most recent of the registrants: The Ohio State University (OSU) for tackling the THE challenge and succeeding: As of June 21, 2022 OSU owns U.S. trademark Registration no. 6763118 for the word “THE” for use with t-shirts, baseball caps and hats. Clearly, the University needed to take a stand to distinguish OSU as the home of THE® Buckeyes® from the Ohio University (OU) Bobcats®! Lucky for me, as a New Englander, I don’t have to choose a side in that contest.

 

   Frederick Spaeth

This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.