“THE” as a trademark

“THE” as a trademark

July 13, 2022

Recently, the U.S. Patent and Trademark Office, after three years of conducting the process, granted The Ohio State University protection for the trademark “THE”, for use on clothing.

Details of the procedure

While the representatives of the said authority, accountable for examining applications, claimed that “THE” in this particular case, especially from the consumer’s point of view, represents only an ornamental sign, and not the one used to mark the origin or distinguish a certain product from other products on the market, the representatives of the party emphasized that “THE” represents an essential element of its identity and history, and thus its trademark as well.

The main opponent of the mentioned party in this procedure is the fashion company “Marc Jacobs”, which has also been trying to protect the respective sign for the needs of its brand since 2019 and according to whose application the final decision has not yet been passed. However, it seems that interest of the subject parties in this situation do not overlap, since one brand is present on the market of sports clothing and equipment, while the other targets a slightly different type of consumers.

Trademark in domestic law

According to the Law on Trademarks (Official Gazette of RS no. 6/2020), a trademark is a right that protects a sign used distinguish the goods or services of one natural person or legal entity from the same or similar goods or services of another natural person or legal entity.

A sign protected by a trademark may consist of any signs, especially words, including personal names, or drawings, letters, numbers, colors, three-dimensional shapes, the shape of goods or their packaging, combinations of these signs or sounds, provided that:

  • it is suitable for distinguishing in the trade of goods, i.e., services of one natural person or legal entity from goods, i.e., services of another natural person or legal entity; and
  • it can be displayed in the Register of Trademarks in a way that enables the competent authorities and the public to determine the subject of protection clearly and precisely.

Legal protection of trademarks is achieved in an administrative procedure conducted before the Intellectual Property Office, which manages the Register of Trademarks. The procedure for trademark recognition is initiated by an application for trademark recognition, which contains the prescribed elements, while the applicant has the right of priority from the date of submission of the application in relation to all other persons who later submitted the application for the same or similar sign that marks the same or similar goods or services.

In addition to the regularity of the application itself, the competent authority examines the fulfillment of the requirements for trademark recognition. If the prescribed conditions are met, after the applicant submits evidence of fee payments for the first ten years of trademark protection and publication costs, the authority registers the recognized right in the Register of Trademarks and issues a trademark certificate to the right holder. The recognized right is also published in the official gazette of the Intellectual Property Office.

Given that a trademark represents a territorial right, i.e., which produces legal effects only in the territory of the country for which it is registered, if the applicant wants to protect the trademark in other countries as well, it is necessary to submit a request for international registration of the trademark to the Intellectual Property Office.

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