So I recently did a video talking about slogans, phrases, and hashtags and the difficulty in registering these “marks” with the USPTO. Naturally a written blog post should follow.
Trademark or Service mark is generally a word, or few words, symbol, character, sound, color or logo that serves as a source indicator. The purpose of trademark is to assist consumers in distinguishing between brands. Trademark differs from Copyright in that where something meets copyright standards, it receives automatic protection where Trademark requires more. The mark must be offered for sale to the public or in other words must establish actual use. That means that simply creating a logo, phrase does not automatically create any ownership where nothing has been offered to the public to associate the mark or slogan with.
Trademarking the actual company name where the mark very strong (not at all associated with the product or service) is not in competition with some other competitor will likely receive trademark protection without much of a fight and will be placed on what is called the Principal Register. Marks on the Principal Register indicates that mark meets basic trademark standards of being distinctive, not at all descriptive of the what the product or service is and has been used in commerce. Marks that do not meet these basic standards are either refused or given the option of placement on the Supplemental Register. Most including myself initially was unaware of the Supplemental Registry however the benefits include giving the mark owner time to establish distinction and source identification in the minds of consumers, can serve as the filing date for purposes of establishing business in other countries, allows use of the official “R” symbol, serves notice to others searching marks, prevents others from filing applications for competing marks and establishes some protection until the mark can establish the necessary secondary meaning.
The cons of the Supplemental Register is that marks placed in them remain vulnerable because they cannot ever achieve incontestability after a number of years like marks on the principal register. Continued use of the mark does not guarantee overcoming the mere descriptive barrier. A new application will have to be filed to request being moved to the Principal Register.
Often clothing companies create statement t-shirts with all kinds of social movements and phrases but unless those phrases have acquired distinctiveness in the minds of consumers they are likely ornamental in nature (ornamental refusal) and does not yet serve as a source identifier. Old Navy is a clothing company that often sells statement shirts. However, they do not trademark every phrase placed on their shirts. They often place the name of the company on shirts as well. In that case, the shirts are easily claimed as source identifiers because “Old Navy” is in fact the name of the company. However phrases not readily identifiable with the company or person who created them must achieve secondary meaning in the minds of consumers. I did a prior blog post on a company that asserted they were the first to create a t-shirt featuring the word “Woman” in different languages. Later Forever21 offered a shirt with the same phrases. Of course the company was upset and accused Forever21 of trademark infringement or copying but under the parameters of what a trademark is and its purpose, I’d argue the phrase was simply ornamental in nature without secondary meaning. I recently searched the records for popular marks I became aware of over the years such as “Vs Everybody” and “Black Lawyers Matter” that became popular t-shirts. Just as I suspected, I had no clue who the actual company or person was associated with either phrases.
While “Vs Everybody” has been added to Principal Register, “Black Lawyers Matter” has not. The USPTO examining attorney of BLM asserted that the mark is merely ornamental in nature and does not readily serve as a source identifier and I’d argue the same could be asserted for “Vs Everybody.”
If you are business owner using a phrase or logo that’s separate from the actual business name whether in connection with your product (t-shirts) or service, besides yourself and maybe a few others that know you personally, would consumers readily associate it with your company? Have you done enough marketing to provide evidence of secondary meaning or distinctiveness? I would argue that neither “Vs Everybody” nor “Black Lawyers Matter” have establish secondary meaning in which consumers readily know who created these phrases. At least not yet. Not every examining attorney will come up with the same conclusion for every case, even when the facts appear to be the same. Just to recap, marks can be placed on the Supplemental Register if the mark is merely descriptive but still capable of serving as a source identifier or able to establish secondary meaning by acquiring distinctiveness with time and significant marketing, like the phrase “Just do it.” Who came to your mind when I mentioned this phrase?
EJLEE LAW is presently working on releasing its first online course in entitled LEGALEE DIY TRADEMARK for those looking to file their own simple trademark registrations!
In the course you will learn:
1. How to choose a strong mark capable of full protection on the principal registry
2. Conducting a sufficient trademark search
3. Whether to do a logo or word mark
4. Choosing the correct areas of protection
5. Establishing use in the market place
6. Completing the application and what to expect
7. Foreign registration
8. Responding to office actions (hopefully you never have to)
9. Post registration responsibilities
If you are interested in taking the course, please sign up for the presale- I need 25 participants to sign up and those that do will receive bonus information, and two lucky winners will be chosen for one on one services with EJLEE LAW! Anyone who signs up for the course but decides to have EJLEE LAW file for them will receive discounted legal services. Your support is appreciated, and as always BE CREATIVELY LEGAL!
feel free to reach out via email- firstname.lastname@example.org
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EJLee Law Practice is a boutique law practice specializing in Entertainment, IP-Copyright and Trademark and Small Business Matters
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SIGN UP FOR THE COURSE HERE! https://mailchi.mp/f461299596b9/legalee-diy-trademark