Can “THE” be a registered trade mark?

In May 2019, Marc Jacobs the fashion brand filed a trade mark application at the U.S. Patent and Trademark Office (“USPTO”), seeking to register the word “THE” as a trade mark for use on clothing and clothing accessories. According to the application made by the fashion brand, Marc Jacobs had not used the mark on its clothing or related products but it claimed that it had the intention of doing so.

Unsurprisingly, Marc Jacobs has hit a few road bumps on the way to registering the mark. Firstly, under examination, the mark was different from the evidence provided to the USPTO as Marc Jacobs has provided the use of the mark on clothing along with subsequent wording, i.e. “THE BACKPACK MARC JACOBS”. From the evidence provided to the USPTO, Marc Jacobs is only attempting to register a portion of the mark, which may be registerable but only if that portion of the mark is separate and a distinct commercial impression. The USPTO is sceptical.

Secondly, the USPTO has stated that it is not convinced by the evidence provided by Marc Jacobs that the mark is capable of functioning as a trade mark as it does not believe that the use of the term “THE” can highlight where the goods originate and distinguish them from other goods. Marc Jacobs has since filed further evidence of the mark individually in use on items of clothing. Again, the USPTO has stated that the use of the mark is a decorative feature and not capable of functioning as a trade mark.

This is not the first application the USPTO has received to register the mark “THE”, with Ohio State University making a similar application. Much like its response to Marc Jacobs, the USPTO responded to Ohio State University with similar comments in relation to the mark’s failure to function as a trade mark. Who is next in line for “THE” crown?

If you have any questions on the above, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.