In our 140-character world, slogans and rallying cries have become a popular shorthand to signify support for the emotion of the moment. As such slogans capture our national attention, it is virtually inevitable that the next day's news cycle contains at least one account of a party seeking trademark protection for phrases such as JE SUIS CHARLIE, HANDS UP DON'T SHOOT, BOSTON STRONG, and LET'S ROLL as a trademark. A commonly asked question is: how can someone obtain trademark rights in a slogan that has already become part of the common lexicon? And what is the difference between attempts to register JE SUIS CHARLIE, versus Taylor Swift's recent filing of 16 trademark applications for the mark THIS SICK BEAT (a catchy line from her song "Shake it Off")?
First, when it comes to phrases that are already in common parlance, the U.S. Patent and Trademark Office ("Trademark Office") will typically refuse to register such phrases on the grounds that they do not indicate source. Particularly as typically used on T-shirts, mugs, and other merchandise, such slogans will be perceived as conveying an informational, social, political, religious, or similar kind of message versus indicating the source of the goods. The majority of applications for phrases that have obtained the status of common parlance are refused on these grounds.
In contrast, the Taylor Swift example refers to a phrase coined and popularized by the trademark applicant herself. The public already associates Swift as the source of the THIS SICK BEAT phrase, and merchandise bearing this phrase would similarly be assumed to emanate from or be associated with Swift.
Second, assuming an applicant, such as Swift, is able to circumvent an informational refusal, the Trademark Office will then consider how the mark is used on goods "in commerce." Trademarks must serve as a source indicator for goods. A large, dominant word mark, slogan, or design emblazoned on the front or back of a clothing item would likely be refused as ornamental because the perception would not be that of source indication. In contrast, the Trademark Office would be more likely to consider a mark placed on hang tags, the inside collar, the sleeve, or on the upper left breast or pocket area, as serving as a source identifier, versus dominating the overall appearance of the goods.
In short, it is certainly possible to obtain trademark protection for catchy and marketable phrases, assuming they are selected and used in a way as to indicate source. Please contact us for advice on slogan selection, use, and protection.
This article appeared in the January 2015 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.