By: Jon Avidor and Torie Levine

Fake news. Covfefe. Make America Great Again. These are phrases and words that are a big part of our current culture and seem like opportunities to make some big money if monetized. But before you spend your energy, and more importantly your money, trademarking these popular catchphrases, consider whether they can be registered and if you are actually eligible for protection.

Trademark as a Source-Identifier

A trademark is any word, name, symbol, logo, slogan, sound, color, or any combination thereof used to identify and distinguish goods and/or services and indicate their source. The objective of a trademark is to allow the public to recognize certain goods and services as originating exclusively with a particular individual or company. It’s all about brand recognition and brand protection. Thanks to trademark registrations, you know that when you walk into the fast food restaurant with the golden arches and order a Coke® and a Big Mac® that you’re getting a cola soft drink with a distinctive taste, two all beef patties, special sauce, lettuce, cheese, pickles, onions on a sesame seed bun®, and, if you’re lucky, a Happy Meal® toy, and that you can expect a certain level of quality from Coca-Cola®, McDonald’s®, and, let’s say, Hasbro®.

The “Use in Commerce” Requirement

The United States is a first-to-use, rather than a first-to-file, jurisdiction, meaning that, all things being equal, priority ownership and use rights goes to the first party to have used a trademark in commerce. A trademark must be actively used in commerce, i.e. in connection with the commercial offering or sale of goods or services, in order to be protected under trademark law. The Lanham Act defines use in commerce to be “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” A mark will be considered to be in use in commerce when (1) goods are sold or transported in commerce and the mark is displayed on the goods or their containers, in association with the goods or on tags affixed to the goods, or if the nature of the goods makes placement impracticable and (2) services are rendered in commerce and the mark is used or displayed on materials to advertise or sell the services. If you plan to use a trademark in connection with certain goods and services in the future, you can apply for trademark protection on an intent-to-use basis, but you would not be eligible for registration unless and until the trademark is used in offering goods or services to the public.

Let’s say you want to trademark the phrase “fake news.” We know now that the trademark must be used in commerce, and you cannot simply trademark the phrase because you thought of it—trademark law protects brands, sellers, businesses, etc. and their goods and services, not conceptual ideas. “Easy solution,” you say. “Let’s put ‘fake news’ on t-shirts and hats and sell them.” D’oh®! The U.S. Patent and Trademark Office will refuse registration of a mark if the use of the mark is purely used as an ornamental or decorative feature on the goods, but not as a trademark to indicate the source of the goods. For instance, slogans displayed on t-shirts and hats can be considered merely ornamental because those purchasers would not automatically think the slogan identified the source of the goods but would just view the slogan as a decoration on the goods.

This brings us to the next issue: who can register that trademark?

Whose Trademark Is It Anyway?

Whether a trademark can be registered is one consideration in the application process, but equally important is whether you, as the applicant, have the exclusive right to use and exploit that trademark and its goodwill. A trademark must identify a source and be associated with the trademark owner and his, her, or its goodwill and recognition among the public and not with some other third party. Catchphrases that don’t identify the source of a product cannot be trademarked. Thus, political catchphrases like “Lock her up,” “Covfefe,” and “Fake News” are associated with President Donald Trump, not any other person applying for registration.

The slogan “Make America Great Again” is owned by Donald J. Trump for President, Inc. (Serial Nos. 85783371 and 86724115). The trademark is used in connection with everything from bumper stickers, to clothing, and political campaign services. Therefore, President Trump’s distinctive use of the phrase gives him an advantage over competitors because he is the sole identifiable source of the catchphrase. Or is he? Back in 1980, presidential and vice presidential candidates Ronald Reagan and George H. W. Bush used “Let’s Make America Great Again” as their campaign slogan, and undoubtedly sold bumper stickers, clothing, and used the mark in the same manner as Donald Trump and Mike Pence. But the association between Reagan and his campaign slogan precursor to MAGA largely faded from the memories of the American electorate, and in a hypothetical trademark dispute between the two campaigns, Trump and Pence would easily prevail over Reagan and Bush as having stronger claims to the trademark on the grounds of actual and current use in the marketplace and present brand recognition. The bottom line is that it’s all about timing, current use in the marketplace, and customer goodwill and brand recognition.

#Trademark

A hashtag is a word or phrase preceded by the symbol # that classifies or categorizes the accompanying text (such as a tweet). Many brand owners want to protect their hashtags from being used in a way that is misleading, disparaging, or confusing with that of a competitor. The Trademark Manual of Examining Procedure (TMEP) states that “a mark comprising or including the hash symbol (#) or the term hashtag is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services.” Like “.com” in relation to a website, hashtags often do not, if ever, add any distinctive value to a trademark that would make an otherwise generic or descriptive mark a distinctive trademark. The TMEP offers #SKATER for skateboarding equipment as an example of a mark that would be refused because it is merely descriptive. A hashtag would also not differentiate a trademark from the same or a confusingly similar prior trademark since, as with .com, # is largely functional and meant to facilitate searches within online social media.

That is not to say that it is impossible to register a hashtag mark. In fact, there are hundreds of hashtag marks registered including #EVERYDAYMADEWELL (Reg. No. 4895377) for online retail store and retail store services and conducting contests and #THE ESTEE EDIT (Reg. No. 4950926) for a fashion, beauty, and lifestyle blog. Yet, even if a hashtag mark is registered, there are challenges to enforcing the mark because tagging a topic on social media is not considered a trademark use under the Lanham Act. Additionally, using another company’s name in a hashtag can be considered fair use. Therefore, while the U.S. Patent and Trademark Office grants registrations for hashtags where they serve as a source identifier, there is still a lot of uncertainty of trademark protection for hashtags.

Think Twice Before You Try to Trademark a Catchphrase

A phrase or word can gain immense popularity in a manner of minutes and entrepreneurs looking to exploit that as a business opportunity should be careful to avoid wasting their time and money. Despite the appeal of trademarking popular catch phrases, it is ultimately difficult to achieve due to who the applicant may be. Further, even if you are able to successfully register the trademark, you still face the hurdle of protecting the trademark from infringement. After all, if the catchphrase is as popular as you think it is, there will be others flooding the market in the same way you are. If trademark genericide has shown us anything, having a federal trademark registration has little value if you cannot defend it from infringement.

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*We would like to thank Torie Levine for her contribution to this article.

By: Jon Avidor and Qualia C. Hendrickson

Escalator. Heroin. Dry Ice. Teleprompter. Laundromat. Each of these words or phrases were originally coined as trademarks, though have since lost their distinctive nature and exclusivity as they slowly became part of the American lexicon in the years since their introduction. They’ve fallen victim to genericide.

“Genericide” occurs when a once-distinctive trademark becomes the commonly used and understood word for a certain type of good or service, in general, and not in reference to any one particular product or manufacturer. Back to our initial list of genericided marks, when people take an escalator, all they know is that they’re hopping on a mechanically ascending or descending staircase and praying it won’t eat their shoelace. As early as 1950, the general public no longer associated the escalator with its 1891 inventor (and Lehigh graduate) Jesse Reno or the Otis Elevator Company, which trademarked “escalator” in 1900. See Haughton Elevator Co. v. Seeberger, 85 U.S.P.Q. (BNA) 80 (Apr. 3, 1950). A trademark can become generic either through the trademark owner’s improper policing of the mark against infringing uses or the public’s use of the mark as the general name for similar good and services. For example, in an October 2013 SEC filing, Twitter Inc. expressed concern that the term “‘Tweet’ could become so commonly used that it [could become] synonymous with any short comment posted publicly on the Internet.” Similar to Xerox, Band-Aid, Kleenex, and TABASCO, Twitter launched a public relations campaign as early as 2010 on how to properly use the word “Tweet,” which drew some vocal opposition, including from the cofounder, CEO, and editor-in-chief of Business Insider.

Trademark owners often lose their exclusive right to use their respective trademarks or service marks due to genericide in two ways: (1) in trademark infringement litigation where a defendant successfully argues genericide as a defense resulting in the mark’s cancellation or (2) where a challenging brand, producer, or manufacturer seeks to cancel the trademark owner’s trademark registration. In deciding whether a trademark has become generic, courts use the primary significance test and ask “whether the primary significance of the term in the minds of the consuming public is now the product and not the producer.” Elliott v. Google, Inc., No. 15-15809 (9th Cir. May 16, 2017). What is relevant is not whether some small portion of the public considers the term an indicator of the source, but rather what the “entire consuming public” considers the term to indicate. Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921). Courts also consider whether declaring the mark generic will create a likelihood of confusion among the consuming public and induce consumers into buying a competitor’s product when they intended to purchase the one made by the original trademark owner.

The following cases illustrate the risks to trademarks posed by, first, a trademark’s owner improper policing and, second, the public’s appropriation of the mark in relation to the type of goods or services in general.

Improper Policing Against Infringement

Asprin
Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921).

Bayer once owned exclusive rights to call the drug acetylsalicylic acid “Asprin” but lost its trademark in one of the greatest examples of genericide. The pharmaceutical company tried to prove the strength of their mark by showing that pharmacists and chemists understood the term “Aspirin” as a reference specifically to Bayer’s drug, but ultimately lost on the basis that whether a mark is generic does not depend on whether a select section of the public understands the mark as a source identifier, but rather whether the public as a whole understands the mark to refer to the product and its single source.

Thermos
American Thermos Products Co. v. Aladdin Industries, Inc., 207 F. Supp. 9 (D. Conn. 1962).

Because it failed to stop others from using “thermos” in connection with insulated bottles and the like, the company that originally owned and produced the bottles under the trademark Thermos is now limited in its rights to its trademark. Additionally, the company failed to prevent generic uses of the term by non-trade publications or follow up with trade publications that agreed to discontinue their generic use but persisted. As a result, other insulated container manufacturers may use the term “thermos” as long as they eliminate the risk of confusion among consumers by preceding the term with their own name or brand and display the term “thermos” in all lowercase, same sized letters.

Public Appropriation of the Trademark

Cellophane
DuPont Cellophane Co. v. Waxed Products Co., 85 F.2d 75 (2d. Cir. 1936).

The original creator of “cellophane” lost his grounds for trademark protection because the mark was employed to describe the product with no other descriptive words, e.g., “Cellophane brand transparent wrapping.” Producers developing products that are the “first of their kind” in the marketplace should keep in mind what the term means to the buying public, which will be central to a court’s analysis. An inventor who does not provide the public with an alternate name and uses only the trademark to market the product will likely subject the trademark to genericide.

Beanie Baby
Ty Inc. v. Perryman, 306 F.3d 509 (7th Cir. 2002).

While Ty Inc. still holds its trademark for BEANIE BABY®, it failed to prove that the use of the term “beanies” for second-hand beanbag stuffed animals diluted the value of its trademark and misled the public regarding brand affiliation. Citing the difference between trademark dilution and fair use, the court noted descriptive or suggestive marks are better candidates for becoming generic than more distinctive marks. If a trademark is a more appealing term than its generic name—just as the term “beanies” is a more appealing name for “beanbag-stuffed animals”—the trademark owner may lose its trademark protection due to public appropriation as a convenient short-hand. Meanwhile, I’m still waiting for my Beanie Baby collection to be worth, like, a million bucks some day—the Millennial dream.

What we can learn from these cases is that trademarks are not well suited for “Set It and Forget It”®, but instead require attention. What trademark owners do with their marks—registered or not—can have significant consequences on the value of their brands as they gain greater market penetration and become household names.

By: Jon Avidor and Qualia Hendrickson

In a unanimous decision in Matal v. Tam, 582 U.S. __ (2017), the U.S. Supreme Court ruled that federal law prohibiting the registration of disparaging trademarks or service marks was unconstitutional under the First Amendment and that the United States Patent and Trademark Office (“USPTO”) may no longer reject applications to register trademarks deemed potentially offensive.

The “Disparagement” Clause of the Lanham Act

At issue in this case was Section 2(a) of the Lanham Act, which refused federal registration to trademarks and service marks that consist or comprise of “immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . . .” 15 U.S.C. § 1052(a). According to the Trademark Manual of Examining Procedure, in determining whether a proposed mark was disparaging, trademark examiners would look at “the likely meaning of the matter in question” based on the dictionary definition and other elements of the mark and how the mark is used, and “whether that meaning may be disparaging to a substantial composite”—not necessarily a majority—of the referenced, identifiable persons, groups, institutions, beliefs, or national symbols based on contemporary attitudes.

This prohibition—and case—only applied to registration of trademarks on the Federal Register (either the Principal Register or Supplemental Register). Federal registration provides substantial benefits to the trademark owner, including among other things, a legal presumption of nationwide ownership of a valid trademark, constructive notice to all other persons of the owner’s exclusive right to use the mark in commerce (plus the right to use the ® symbol), and greater monetary remedies in infringement lawsuits. However, prior to this case, potentially disparaging marks that would have otherwise been ineligible for federal registration could nevertheless develop common law trademark rights based on continued use in commerce.

The Slants

Matal v. Tam concerned the Asian-American dance-rock band The Slants, or as their new EP cleverly refers to themselves, “The Band Who Must Not Be Named.” The band applied to register THE SLANTS trademark with the USPTO twice, first in March 2010 and again in November 2011, in Class 41 for use in connection with “Entertainment in the nature of live performances by a musical band.” The USPTO issued an office action denying the application under Section 2(a) of the Lanham Act because the likely meaning of “SLANTS” was a negative term used in reference to the shape of certain Asian people’s eyes “in a disparaging manner because it is an inherently offensive term that has a long history of being used to deride and mock a physical feature of those individuals.” On appeal, the refusal was affirmed by the Trademark Trial and Appeal Board.

Lead singer of the rock band and named appellant Simon Tam argued he named his group The Slants to “reclaim” and erode the Asian stereotype and slur and to empower other Asians to “be proud of their cultural heritage, and not be offended by stereotypical descriptions.” Through their songs and performances, The Slants “weigh in on cultural and political discussions about race and society,” which Tam argued are at the heart of the First Amendment’s protection of free speech and expression. The U.S. Court of Appeals for the Federal Circuit agreed with Tam in a 10-2 ruling, writing, “Whatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others. Even when speech ‘inflict[s] great pain,’ our Constitution protects it ‘to ensure that we do not stifle public debate.'” The government appealed the ruling to the Supreme Court.

Appeal to the Supreme Court

The Supreme Court heard arguments on January 18, 2017 (prior to Justice Gorsuch’s appointment) and decided the case on June 19, 2017, holding 8-0 in favor of Tam and The Slants. Justice Alito delivered the opinion of the Court, and Justices Kennedy and Thomas filed concurring opinions. The high court upheld the Federal Circuit’s decision and struck down the disparagement clause of the Lanham Act as a facial violation of the First Amendment to the Constitution, agreeing that the Lanham Act’s provision prohibiting the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead” could not withstand legal scrutiny of laws that discriminate on the viewpoint of the speaker.

While the government may constitutionally regulate or prohibit certain types of speech, these restrictions are narrowed exceptions to the “fundamental principle of the First Amendment that the government may not punish or suppress speech based on disapproval of the ideas or perspectives the speech conveys.” Governmental restrictions on one’s speech based its the content, i.e., either the subject matter or viewpoint of the speech, must meet strict scrutiny, meaning the burden is on the government to prove that the content-based restriction is necessary to protect a compelling governmental interest and is narrowly tailored to serve that interest. The Lanham Act, as well as the Trademark Manual of Examining Procedures, generally establishes viewpoint-neutral guidelines for trademark examiners to determine whether to grant an applied-for mark based on factors such as the mark’s distinctiveness to the consuming public, its similarity to other existing marks in the marketplace, and the mark’s likelihood to confuse consumers, among others. However, the Court ruled that the disparagement clause at issue in this case provides the USPTO with broad discretion to reject trademark applications on the basis that the content could offend particular persons, groups, institutions, beliefs, cultures, or ideologies, and unconstitutionally placed the burden on the applicant to prove the mark was not disparaging—a burden Tam and The Slants could not overcome in their first appeal. While the Government argued that trademarks primarily serve to identify the source of good or services, and are therefore commercial speech entitled to lessor scrutiny than expressive speech, the Court held that allowing the government to approve or disapprove of a trademark’s expressive elements was a violation of applicants’ constitutional free speech rights, and that as a fundamental principle of the First Amendment, “Speech may not be banned on the ground that it expresses ideas that offend.”

In a concurring opinion, Justice Kennedy focused only on the disparagement clause’s viewpoint-based discrimination and how the government could not carve out a subset of language it did not approve of and disguise their viewpoint discrimination as censorship, writing, “By mandating positivity, the law here might silence dissent and distort the marketplace of ideas.” For that reason, the challenged provision of Section 2(a) of the Lanham Act could not pass rigorous scrutiny. He and Justices Ginsburg, Sotomayor, and Kagan found further discussion of the other arguments presented unnecessary.

In a separate concurring opinion, Justice Alito addressed the government’s other arguments, including the “government-speech” doctrine that the USPTO used to defend its right to express its own viewpoint, warning that the argument is susceptible to dangerous misuse. He distinguished this case from a 2015 case, Walker v. Sons of Confederate Veterans, 576 US __ (2015), in which the Court allowed Texas to refuse to print the confederate flag on specialty license plates because license plates are government speech. Justice Alito wrote, “Trademark is private, not government, speech,” and that to allow trademarks, which are created by private individuals or businesses, to be passed off as government speech by virtue of a government seal and registration to it would be to permit the government to limit and silence speech the government found offensive and infringe on individuals’ rights.

Implications on Future Trademarks

The Court’s decision in Matal v. Tam eliminating the disparagement clause of the Lanham Act will certainly open the door to registering trademarks that have been rejected or cancelled under the disparagement clause. Interestingly, Reuters found that, since 2014, the Supreme Court often disagrees with specialized intellectual property courts and has upheld only 2 of 16 cases decided by the Federal Circuit court of appeals, which hears appeals from the administrative Trademark Trial and Appeals Board and Patent Trial and Appeal Board.

Perhaps the most widely known and hotly debated case of a refusal of trademark protection occurred in 2015 when a judge in the U.S. District Court for the Eastern District of Virginia affirmed a 2014 ruling by the Trademark Trial and Appeal Board declaring that the Washington Redskins’ name was offensive to Native Americans, cancelling six of the football team’s trademark registrations. An appeal was on hold in the Court of Appeals for the Fourth Circuit pending the outcome of Matal v. Tam, though in light of the Supreme Court’s decision, the team, which has used the Redskins name since 1932 amid both wide support from fans and vocal criticism from Native American advocacy groups and in the media, believes their dispute with the government will resolve in their favor. The court of public opinion is an entirely different beast, however, so the future of Redskins brand remains to be seen, though in the meantime, owner Dan Snyder says he is “thrilled” with the ruling.

*We would like to thank our intern Qualia C. Hendrickson for her contribution to this article.