‘OK Go!’ Suit

Highlights TM Protection For Common Words

Last year, The Ohio State University was granted the trademark for the word “the” by the U.S. Patent and Trademark Office. This event seems to  elicit the same question from people I’ve talked to: Can you register a  common word? 

The answer is yes, of course you can. The best example is Apple Inc.,  which registered a common word as the name of its line of electronic  devices, a trademark that is reportedly now worth billions of dollars. 

In fact, one of the strongest categories of trademarks is an arbitrary  trademark, which is a common word used uncommonly. Another well known example is Amazon, the name of a river in South America, which today might be  more associated with online retail. 

A recent lawsuit involving the phrase “OK Go!” provides the latest opportunity to look at  the issue of trademarking common words. In Post Foods LLC v. OK Go Partnership, the band  OK Go found itself being sued in the U.S. District Court for the District of Minnesota in  January by Post Foods. 

The maker of popular cereals wants to use the name “OK Go!” for a new line of instant  cereal cups[1] — a much different context than music, though the unique name could  potentially cause confusion among fans of the band. 

OK Go, which had registered their trademark, threatened to sue Post Foods when they first  learned of the product, which caused Post to preemptively sue the band in order to have a  court declare that they aren’t doing anything wrong. Although this dispute is still being  litigated, it is an interesting case and illustrates why you have to be careful when picking  your name. 

But, some might say, isn’t “the” a little bit different? It’s one of the three main articles in  English grammar — the other two are “a” and “an.” As reported by Thoughtco.,[2] “the” is  the most used word in the English language; it is used about every 16 words. So, will we  have to pay Ohio State to use “the”? Will the University of Michigan have to change its  stadium name from The Big House to Big House? 

Of course not. We can still buy apples, make apple pie and drink appletinis, even though  Apple Inc. registered Apple as a trademark. Trademark protection extends to the products  and services on which the trademark is used. Ohio State registered “the” for clothing,  namely T-shirts, baseball caps and hats sold through channels customary to the field of  sports and collegiate athletics. 

Ohio State isn’t alone in filing and getting registration for the trademark “the” for  clothing. Marc Jacobs International filed for trademark protection of “the” on May 6, 2019,  just over three months before Ohio State filed its trademark application. 

This gave Marc Jacobs what is known as priority in the USPTO. Priority is important when  two registrants fight over who gets registration. Marc Jacobs fought Ohio State over who  would get to register “the” and opposed Ohio State’s registration. An opposition is a proceeding before the USPTO to have them determine who gets the registration. 

Having priority gives Marc Jacobs important advantages in an opposition. In fact, Marc  Jacobs knew the importance of filing first and filed before it even used its trademark. This is  called an intent-to-use application, and it’s a good strategy to get your trademark  application on file as early as possible. You don’t have to wait to use your trademark to get  the registration process started. 

With an intent-to-use application, the USPTO examines the application and, once all the  requirements are met, issues an allowance. But it won’t issue a registration until the  applicant proves they are using it. Once use is proven, the registration issues. 

Ohio State filed an actual use registration, alleging use since August 2005. Even though the  university waited 17 years to file for federal trademark registration — never a good idea — it still was able to allege use back to 2005. 

This is possible in the U.S. because trademark rights begin as soon as you use your  trademark. This shifted the advantage to Ohio State in the opposition because whoever uses  a mark first usually wins the opposition proceedings. 

In the U.S. you can have trademark rights without registering your trademark; this is called  common law rights. As soon as you use a word, a symbol, etc., as a trademark, you begin  to establish trademark rights. 

Although common law rights are available, you should take affirmative steps to register  your trademark. Every state has a trademark registration system. State registration is good  if you only use your mark in the state, but if you use your trademark in interstate  commerce, federal registration is best. 

Federal registration is important for many reasons. Here are a few: 

  • It provides a self-policing function giving notice of the registration. All trademarks  are listed on the USPTO website.[3] When choosing a trademark, this is the first  place to check for availability. When a mark is already listed, most will avoid it and  pick a new trademark. 
  • Your rights extend throughout the U.S. 
  • Your mark can become incontestable after 5 years, which provides valuable  presumptions in litigation. 
  • You also can use the registered trademark symbol, which shows a mark is registered  with the USPTO. 

These are some of the reasons why Marc Jacobs and Ohio State wanted federal trademark  registration and were ready to fight each other for that right. But why fight when you can  settle? 

Marc Jacobs and Ohio State consented to have each of their trademarks registered. They  were both trying to register for clothes, but the clothes were different, and they changed  the channels of trade in their applications. 

Marc Jacobs limited its application to the sale in channels of trade customary to the field of contemporary fashion, while Ohio State’s application was limited to channels customary to  the field of sports and collegiate athletics. Both trademarks were then registered by the  USPTO. 

Surprisingly, these two are not the only companies to register “the.” “The” was first  registered as a trademark on Feb. 24, 1987, for computers made by Thompson, Harriman &  Edwards Computer Products Co. Ltd. 

It has also been registered for refrigerators, educational services, educational publications,  cellphones, knee and elbow pads, bicycle and motorcycle helmets, and goggles. There are  also several registrations for “the” in different letter formats and with various designs. 

The Takeaway 

Trademarks are an important and a valuable business asset — sometimes a business’s most  valuable asset. For example, The World Trademark Reporter estimated in a January 2022  article[4] that Apple’s trademark was worth $355 billion, representing about one-third of the  company’s market value. Other top-valued trademarks are Google, Microsoft, Facebook,  Amazon and Coca-Cola, each of them worth billions. 

Every business has at least one trademark. Its value grows as your business grows. It is  your identity. Your customers know your reputation and how to find you by your trademark.  With business, a rose by any other name is not a rose. If you were to lose your trademark,  you would have to choose a new one and reestablish that name with your customers, not an  inexpensive proposition. 

I represented a client that chose its business name without any research. Five years later, a  large international company sued my client for trademark infringement. It was faced with  the choice of litigating to keep its name or changing its name. Both were unexpected  expenses that could have been avoided with a simple investigation when initially choosing  its business name. 

If you are choosing a trademark for the first time, make sure that it is strong, that it can be  protected and that it will not infringe upon another’s rights. Also, don’t assume that words,  symbols, logos, etc., are not trademarks. They may be, just as “the” is a trademark. 

Once you make your decision, register the new trademark with the USPTO to make it even  more valuable. It is well worth the investment. 

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[1] https://www.postconsumerbrands.com/ok-go/

[2] https://www.thoughtco.com/definite-article-grammar-1690423

[3] https://www.uspto.gov/trademarks/search

[4] https://www.worldtrademarkreview.com/article/apple-retains-most-valuable-brand crown-tech-boom-continues-and-tiktok-soars