Can Marc Jacobs get trade mark protection for the word “THE”?

In May 2019, Marc Jacobs (MJ) applied in the USA, to register the word “THE” for clothing and handbags. The application has gone back and forth with the US Patent and Trade Mark Office (USPTO) over the registrability of the word as a trade mark. Initially MJ submitted evidence showing that the word would be used as part of a longer sentence – “THE BACKPACK MARC JACOBS”. When that failed to win the USPTO round, MJ provided an image of a jumper with the word “THE” on it. This time the USPTO stated that the use of “THE” was unlikely to distinguish the goods of Marc Jacobs from other brands, in accordance with the essential function of a trade mark being to indicate the source of particular goods and services. I expect that MJ will be trying to come up with another way to win this one. It’s an interesting observation of how organisations are trying to expand their rights over such generic words. Although somewhat different, we see a crowded market for the use of girl’s names on clothing, particularly denim, where companies have already secured registered protection for those names. The brand owner is then faced with a ‘cease and desist’ letter and costs to either settle or fight the claim. While not a silver bullet, trade mark searches before using a name are key in your armoury to limit the chances of claims like this.