Last year Emerson College students came up with the phrase “Boston Strong” and later started selling T-shirts to raise money for victims of the Boston Marathon bombings; today, no one organization or person owns the phrase and likely never will.
Why No One Owns “Boston Strong”
In rejecting nine trademark applications from businesses, including a Boston-based T-shirt company, the U.S. Patent and Trademark Office reasoned that, “Because consumers are accustomed to seeing this slogan or motto commonly used in everyday speech by many different sources… the mark fails to function as a trademark.”
The saying went from a shirt to a viral Twitter hashtag and rally chant almost instantly. The saying was even placed on Fenway Park’s “Green Monster” wall. No one can own the phrase “Boston Strong” since it has become more of a message or attitude that grew from an event; the phrase isn’t representative of those making the items. Now, because of the ruling, anyone can use the phrase at will; sadly, this means individuals can sell merchandise without giving back as others have done.
What Can and Can’t Be Trademarked?
A trademark is any “thing” that helps a consumer distinguish between one company’s products and another company’s products. The “thing” may be a word or other device such as a phrase, logo, sound, or package design, as long as it is used as a way of identifying for the consumer that one brand is different from another. It is not necessary that the consumer be able to identify the specific manufacturer. Rather, the mark need merely to communicate to consumers that the goods or services bearing the mark come from a unique source, distinguishable from all the other sources for those goods or services. Do a trademark search at www.uspto.gov and an internet search of your name to see just how original your word or phrase really is. Most importantly, contacting a good trademark attorney can help you avoid trademarking pitfalls.
Some examples of reasons the USPTO might reject a trademark application could include, but are not certainly limited to the following:
– A mark will be rejected if it is merely descriptive of the goods and services and has not acquired secondary meaning.
– A mark will be rejected if it simply consists of a generic term.
– A mark will be rejected if it primarily describes, or is deceptive about, the geographic origins of the goods and services.
– A mark will be rejected if it is primarily merely a surname.
– A mark will be rejected if it is deemed immoral, deceptive or scandalous.
Surprising Trademarks
Chanel’s “Jersey” fragrance was launched in 2011, named after the fabric made popular by Coco Chanel. Confusion arose, and Chanel’s attempt to trademark the name Jersey was denied by the UK’s Intellectual Property Office, although the fragrance had nothing to do with the Channel Islands.
Catch phrases are surprisingly easy to trademark in many cases. Unlike the “Boston Strong” phrase, many phrases are so strongly-associated and identified with high-profile people that those who own the phrase can collect pretty handsome royalties for being quoted, intentionally or not. Paris Hilton successfully sued Hallmark for using her phrase, “That’s hot” in greeting cards. Michael Buffer currently makes more money from his phrase “Let’s get ready to rumble” than he does from announcing boxers and using the phrase himself. Donald Trump, however, hasn’t been able to trademark the phrase “You’re fired.” You’d be surprised what you could get sued over for uttering commercially.
Then there’s the fact that no one but the NFL may commercially utter the phrase “Super Bowl,” or should we say That-Big-Game-That-Must-Not-Be-Named. But that’s a whole other copyright story.
Words, interestingly, aren’t the only things people attempt to trademark. Harley-Davidson tried to register the sound of a revving engine; a French company tried to trademark the smell of strawberries; Walmart even tried to trademark the yellow smiley face. All failed. They key is that a trademark is meant be a mark of trade origin and distinctive identity. For example, no coffee-making company can trademark the word “coffee,” for a number of obvious reasons.
If you’re attempting to trademark something, make it obvious that that phrase is largely part of your identity — after ensuring that no one else has already done so. Integrate the phrase into your website and other materials (business cards), use it in your social media hashtags, etc.
