In May 2019, counsel for Marc Jacobs filed an interesting trademark application. The New York-based brand was – and still is – seeking a registration for the word “THE” for use on handbags and clothing, among other related goods. According to the application that it filed with the U.S. Patent and Trademark Office (“USPTO”), Marc Jacobs and his eponymous, LVMH Moët Hennessy Louis Vuitton-owned fashion brand had not yet begun using the “THE” mark on those types of products but had a bona fide intention to do so in the not too distant future.
You might be able to guess what happened next: a few rounds of back-and-forth between a USPTO examining attorney and Marc Jacobs’ counsel about the registrability of “THE” as a trademark. Following an initial Office Action in June 2017, which required Marc Jacobs to be more specific in its claim for “waterproof clothing” and “ties” as types of goods in connection with which it would use the mark, the USPTO sent a second letter in August 2020. (An Office Action is the rather routine letter sent by the USPTO to notify a trademark applicant about issues with his application, including the reason why registration is being refused and/or what requirements must be satisfied in order for the application to move forward).
In the second letter, Aisha C. Johnson, the USPTO attorney tasked with examining Jacobs’ application, preliminarily called foul on the basis that the drawing of the mark, itself, differed from the specimen (i.e., a required sample that shows how the trademark for which the party is seeking a registration is used in commerce) that Jacobs’ counsel submitted to the USPTO. To be exact, Jacobs provided the USPTO with a photo of a backpack with a patch that reads “THE BACKPACK MARC JACOBS” and another of a jacket with a tag inside that says, “THE VELVETEEN JEAN JACKET MARC JACOBS” as evidence of how it was using the “THE” mark in commerce.
Since the mark for which Jacobs is seeking registration consists exclusively of the word “THE” – which is “only a portion of the mark [that] appear[s] on the specimen” – there was a problem at play, according Johnson, who noted that “a portion of a mark may be registered only ‘if that portion presents a separate and distinct commercial impression.’” Given that Jacobs’ mark is “a non-separable part of [what] appear[s] on the specimen,” Johnson determined (again, on a preliminary, non-final basis) that Jacobs “failed to provide the required evidence of use of the mark in commerce.”
Failure to Function
More than merely objecting due to the mis-matching trademark drawing and specimen, the USPTO was not convinced that the mark – “as used on the specimen of record” – actually functions as a trademark. In other words, Johnson was skeptical that Marc Jacobs’ use of “THE” serves “to indicate the source of [the brand’s] goods and to identify and distinguish them from others,” and so, she preliminarily refused the application on that basis, as well.
In response to the Office Action, Marc Jacobs filed a new specimen, this time of a sweater emblazoned with the word “THE” on it. (And changed its filing basis from 1(a) to 1(b) “intent to use”).
Still unpersuaded about the ability of the mark to function as a mark, the USPTO issued a final Office Action in March 2020, asserting that “the applied-for mark as used on the substitute specimen of record” – the “THE”-emblazoned sweater – “is merely a decorative or ornamental feature of [Marc Jacobs’] clothing and, thus, does not function as a trademark to indicate the source of [Marc Jacobs’] clothing and to identify and distinguish” it from the clothing of other brands.
The examining attorney’s reasoning? Well, for one thing, she took issue with the placement of the “THE” front and center on the sweater, stating, “With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt.”
In case that is not enough, Johnson also stated that the mark “appears to be a design element in the form of a word that is used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance.” Undeterred, Jacobs’ counsel filed a request for reconsideration and changed its filing basis back to an “intent to use” one, and the mark has since been published for opposition by the USPTO.
As for what can be expected now, trademark attorney Stephen Stanwood says that Marc Jacobs “has one huge obstacle ahead: showing that it can actually use a standalone ‘THE’ as a trademark,” which it “has tried and failed to do that twice already: first with tags that said ‘THE BACKPACK’ and ‘THE VELVETEEN JEAN JACKET,’ and then with a sweater that just had a giant ‘THE’ across the chest.”
Based on the USPTO’s responses this far, “It is going to take more than [those uses] to actually lock down a registration,” Stanwood says.
In terms of swapping from an “intent to use” filing basis to actual use to “intent to use” again, he notes that counsel for Marc Jacobs has “been zigging and zagging to try to find a way to make this work for a while now.” That is why the brand filed its application back in May 2019 “claiming that they had not started using ‘THE’ as a trademark yet,” thereafter, “amended [the application] and claimed they had been doing so since 2018,” and has since gone back on itself, claiming that “they have not started using their ‘THE’ brand yet.”
While the USPTO “was justifiably skeptical to begin with here and is likely even more skeptical now,” per Stanwood, there is something else at play, as well. Marc Jacobs is not the only party claiming rights in “THE.” As it turns out, just a few months after the fashion brand filed its trademark application for registration, Ohio State University filed a trademark application of its own for the word “THE” for use on clothing, including t-shirts, baseball caps and hats, which the school says it has been using – as a trademark – since at least 2005.
As of April 2020, Ohio State’s application – which has received failure to function pushback of its own from the USPTO – has been on hold pending the trademark office’s decision in connection with Jacobs’ application for its potentially “confusingly similar” mark.