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Don’t Claim Popular Phrases as Trademarks, and Be Careful Using Them in Advertising

Wednesday, December 20th, 2017

Attempting to cash in on a popular phrase is risky. Think twice before applying to register a popular phrase as a trademark, and do your homework before selling goods or branding services with a popular phrase.

Remember the 2015 terrorist attack on the offices of the French satirical newspaper Charlie Hedbo? In its wake, “Je Suis Charlie,” which means “I am Charlie,” became a cry of solidarity.

Most were outraged. Some filed trademark-registration applications with the U.S. Patent and Trademark Office.

Steven Stanwyck was involved in one of the applications for JE SUIS CHARLIE. After filing, he brazenly sent a cease-and-desist letter to Charlie Hedbo regarding its use of the slogan. Stanwyck notified the terrorized publication that his group would “entertain any serious licensing, or other arrangements, you may suggest in writing.”

All applications for JE SUIS CHARLIE have since been abandoned.

Morally, these applications are wrong. But, regardless of morality, an application to register a recently popular phrase almost always will fail.

For example, none of the 11 federal trademark applications for the phrase BOSTON STRONG succeeded.

The Trademark Office rejects most such applications for one or both of two reasons. First, it usually holds such applied-for trademarks are “merely informational matter.” A trademark signifies the source of the branded good or services. Merely informational statements don’t do that. Such statements are just talk – humor, criticism, inspiration, etc.

Second, the Trademark Office often finds such applied-for trademarks are “merely ornamental matter.” In other words, the words are decorative, not an indication of who made the goods. A t-shirt saying “I love New York!” doesn’t signify that New York City make it.

The Trademark Office recently issued guidance making it tougher to claim trademark rights in “merely informational matter.” I think it did so to limit trademark registration for dirty words and slurs, because recent court decisions made registration of them possible.

Last summer, the U.S. Supreme Court ruled that the Free Speech Clause of the First Amendment makes it unconstitutional to deny trademark registration to a trademark that disparages a group. That case enabled a rock band composed of Asian men to register their band name – THE SLANTS.

Just last week, a federal appeals court built upon that ruling by holding it is unconstitutional to deny registration to dirty words.

Entrepreneurs with low morals have rushed to the Trademark Office to claim derogatory and dirty words as trademarks. 97 pending applications include the F word.

Many of these applications are for statements to be emblazoned on t-shirts and similar goods. For example, a Georgia entrepreneur applied to register JUST F*** IT (replacement stars are mine) for shirts.

While the Trademark Office can no longer deny these applications because the claimed trademarks are derogatory or dirty words, its new guidance will cause most of these applications to fail because the statements are merely informational. If you see JUST F*** IT on a t-shirt, you are likely to think the wearer has relaxed attitude toward achievement, not that a company of such name made the shirt.

Keep in mind, you don’t have to register a popular phrase as a trademark to use it on consumer goods. Registration just strengthens the trademark rights that arise from using the trademark.

Regardless of whether you seek trademark registration for a popular phrase, don’t use such phrases on your goods or to promote the sale of your services without first having an attorney check to see if someone else has trademark rights in the phrase.

Sometimes the Trademark Office allows a trademark to become registered when it shouldn’t have. Sometimes a business will coin and register a phrase that later enters popular culture.

For example, a California entrepreneur owns eight federal trademark registrations for WAG MORE BARK LESS for many items, such as stickers and t-shirts.

Finally, remember many popular phrases come with emotional baggage. Many consumers dislike anyone trying to earn a buck off of a tragedy or someone else’s success. Build your own brand rather than trying to free ride on the triumph or suffering of others.

Written on December 20, 2017

by John B. Farmer

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