by Intellectual Property Attorney Bill Honaker, the IP Guy
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 its 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 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’s 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.
About the Author:
Bill Honaker, “The IP Guy” is a former USPTO Examiner, a partner with Dickinson-Wright, and author of the forthcoming book, Invisible Assets – How to Maximize the Hidden Value in Your Business. To download a sample chapter, click here.
To get answers to your questions click here to schedule a time to talk, email Bill@IPGuy.com, or give him a call at 248-318-7015.
[1] https://www.postconsumerbrands.com/ok-go/
[2] https://www.thoughtco.com/definite-article-grammar-1690423
[3] https://www.uspto.gov/trademarks/search