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John B.
Farmer

 

Lawrence E. Laubscher, Jr.

 

Ian D. Titley

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Do Opportunists Actually Cash In When Applying to Register Suddenly Popular Phrases as Trademarks?

Tuesday, March 17th, 2015

It’s as inevitable as the sunrise. Tragedy strikes and a popular phrase is born. Or a sports star explodes on the scene and earns a catchy nickname. Then a bunch of opportunists run to the federal Trademark Office to try to cash in by applying to register that name or phrase as a trademark.

For example, within a week of the Islamic terrorist bombing at the Boston marathon, eight applications were filed to register the trademark BOSTON STRONG. Two more were filed shortly thereafter.

More recently, a couple of applications were filed to register JE SUIS CHARLIE right after the Islamic terrorist attacks on Jews in Paris.

Within a month of Jeremy Lin’s rise from obscurity in 2012 to lead the New York Knicks to a stunning turnaround, ten applications were filed by others to register the trademark LINSANITY.

Do these opportunists successfully cash in on their trademark applications? Almost always, the answer is “no.”

If the trademark refers to a famous person, the Trademark Office will refuse registration unless that person consents. That applies even if the trademark isn’t a given name of the person. Thus, applications by others to register JOHNNY FOOTBALL and LINSANITY were rejected.

But what about suddenly popular phrases? Those usually fail too. To understand why, some background on trademarks is necessary.

You don’t “trademark” a name or phrase or anything else. Instead, you apply to register a trademark.

A trademark is created by using an identifier (such as a product name) in commerce to promote the sale of goods or services. Trademark registration only strengthens trademark rights.

When you apply to register a trademark, you must list the goods and services you have branded or will brand with that trademark. Your trademark registration will not issue until you prove such usage.

The usage requirement stops many applications. The excitement of “cashing in” gives way to the need to find a way to profit on selling things.

Also, the purpose of a trademark registration is to stop others from using that trademark without your permission on similar goods or services or, perhaps, to require others to pay you to use that trademark.

Trademarks don’t enforce themselves. You have to hire lawyers to do that. Litigating to protect trademarks usually costs more than whatever money you recover. Thus, rushing to the Trademark Office to cash in on a popular phrase usually would be unprofitable.

In addition, popular slogans are by nature personal statements. To be a trademark, and to get a trademark registration, a word or phrase must be a source indicator – usually a company’s trade name (such as CHICK-FIL-A) or a non-descriptive name given by that company to its product or service (such as BIG MAC).

If your t-shirt says BOSTON STRONG or the like, the public would not infer some company by that name made your shirt or that the phrase is the name of a clothing line. The public would just infer what you think about the Boston bombing. That’s not a source indicator, so it can’t be a trademark.

Some people do cash in successfully, but not the opportunists described above.

Someone might seek a trademark registration for his newly famous nickname and successfully market, say, clothing items bearing that nickname. Jeremy Lin and Johnny Manziel did that. Lin successfully registered LINSANITY for various goods and Johnny Manziel has applied to do the same with JOHNNY FOOTBALL.

(Side joke: one of the services Manziel claims to offer under his JOHNNY FOOTBALL trademark is motivational and educational speaking “in the field of self and personal improvement.”)

Also, an entertainer might successfully get a trademark registration on his signature line. Boxing announcer Michael Buffer owns a trademark registration on his famous intro LET’S GET READY TO RUMBLE for entertainment services. Twentieth Century Fox owns a sound trademark registration covering entertainment services on the D’OH! made famous by Homer Simpson. Taylor Swift has applied to register THE SICK BEAT for use on various things from Christmas ornaments to toiletries.

In the case of these famous folks, they have earned riches from entertaining with these signature phrases, so they can afford steep legal fees to keep others from cashing in on them.

In other words, for successful entertainers, trademark registration is worthwhile because they create brand value themselves and protect it with a trademark registration. The economics usually don’t work when you just try to cash in on a phrase you didn’t build yourself.

Written on March 17, 2015
by John B. Farmer

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