THE BLOG

Trademark Your Memorable Phrases

02/12/2015 10:46 am ET | Updated Apr 14, 2015

Memorable phrases that capture the popular imagination are commercially worth millions of dollars. Consequently, it is no surprise that Taylor Swift has trademarked a variety of phrases from her songs. Individuals, for-profit and non-profit businesses, and even social movements and loosely organized entities may possess valuable intellectual property. All need to think beyond slogans developed in standard advertising campaigns. Consider the spectrum of Tweets and other ways in which a brilliantly brief idea might be expressed and used commercially, perhaps in the future if not currently. Promptly protect this intellectual property with the assistance of experienced legal counsel. This comment provides a very brief educational outline of an important form of intellectual property.

A trademark may be registered if it is currently in commercial use or will be so used within six months. The six month period may be extended by 30 months in certain circumstances, essentially granting a three year window before the trademark must be used commercially and a required use statement be filed. Details of registration and a searchable database are available online at www.uspto.gov. While one may claim trademark ownership and infringement without registration, registration is preferable to show usage, preventing third parties from filing an application and to obtain international protection.

A trademark must be distinctive or have secondary meaning. Secondary meaning is demonstrated when the consuming public, typically through surveys, associates the idea with a particular product. Without discussing distinctiveness and secondary meaning in detail, consider that a color may be trademarked if uniquely associated with a particular product and not a functional part of the product.

While copyright focuses on who created the unique materials, trademark focuses upon consumer associations. Copyright typically does not provide adequate protection for phrases since there is limited originality in a few words and fair use is a defense to an infringement claim.

The requirement of commercial use plus First Amendment political expression freedoms frequently prevent trademarking a political phrase. The reader might immediately associate the phrase "mama grizzly" with a well know political figure but did this individual use it commercially? Taylor Swift in contrast sells songs with her phrases and is arguably better able to assert trademark protection. On the other hand, political speech may allow a measure of trademark infringement that commercial competitors would not be allowed.

A related intellectual property right is the right of publicity. The right of publicity involves the commercial value of personal identity, frequently involving characteristics such as likeness or voice. It may involve phrases as in the famous 1983 case granting Johnny Carson ownership of "Here's Johnny." Hence, celebrities may own publicity rights beyond those provided by trademarks.

Understand that trademark registration is subject to judicial review and is not final and conclusive proof of ownership. Additionally, various forms of intellectual property may overlap with blurry dividing lines. Nevertheless, rapid trademark registration grants both legal advantages and prevents a third party from jumping ahead. Some commentators have noted that trademarks may also become a valuable asset of social movements. In this age of brevity and rapid trends, trademarking makes sense. Consult experienced legal counsel in your particular situation.