Description
Brandmarking
betting that at least some of her lyrics will become well known, and will
make effective trademarks for at least some types of products.
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“TRADEMARK” IS NOT A VERB
Almost every article I’ve read about Taylor Swift’s brandmarking
campaign has committed the cardinal sin of using the word
“trademark” as a verb. For example:
•
“Taylor Swift Trademarks ‘Party Like It’s 1989”
•
“Can Taylor Swift Really Trademark ‘This Sick Beat’?”
•
“Taylor Swift Just Trademarked Her Favorite ‘1989’ Lyrics”
And so on. This isn’t just the pet peeve of an inveterate grammar
geek. It embodies the common misconception that trademark
rights are something that only the federal government can give –
and thus something that the government can take away.
As regular Brandmarking readers know, trademark rights arise from actual use of the mark in commerce. As I tell my law students, it’s the Forrest Gump principle: “Trademark Is as Trademark Does.” When you adopt a name, or a slogan, or a logo, and use it to identify your goods and services in the marketplace, it becomes your trademark and you automatically gain common law trademark rights. Registration enhances and perfects those rights. But as we learned from the Washington Redskins case, the fact that the government takes away your registration doesn’t mean you can no longer use your trademark. So, just to set the record straight: Taylor Swift did not “trademark” her song lyrics.
She applied to register her song lyrics as trademarks. SPEAKING OF THE REDSKINS… It’s been almost a year since the Trademark Trial and Appeal Board ordered the cancellation of six registrations owned by the professional football team that include the word REDSKINS. As expected, ProFootball appealed, in the form of a lawsuit filed in U.S. District Court for the Eastern District of Virginia.
In addition to simply arguing that the TTAB arrived at the wrong decision, Pro-Football also argues that the statute on which the challenge was based – Section 2(a) of the Lanham Act, which permits cancellation on grounds that a trademark “may be…disparaging,” – is unconstitutional: Noting that trademarks are “commercial speech” protected by the First Amendment, Pro-Football argues that Section 2(a) impermissibly penalizes it for taking the position, in public discourse, that using REDSKINS as a team name is not disparaging but a sign of respect. • Pro-Football also argues that the statute is unduly vague, noting that the term “disparaging” has a variety of dictionary definitions, none of which is formally specified by the statute, and that no one can reasonably anticipate whether the Trademark Office, or a court, would find that any particular term “may be” disparaging. • She did this by taking advantage of a provision of the Trademark Act that permits you to apply to register trademarks you haven’t used yet but that you have a “bona fide intent” to use in the (relatively) near future. In effect, you can reserve rights in a trademark for up to three years while you decide what you really want to do with it. In the meantime, the rest of the world is on notice of your claim of rights, and needs to think twice before using your mark on its own products. It’s a strategy that any business should consider for goods and services that are still on the drawing board. • Pro-Football also argues that the statute unfairly allows the TTAB to cancel its registrations now, devaluing an asset that ProFootball spent millions of dollars developing, even though the first of the registrations issued almost 50 years ago, and the Trademark Office has renewed all of the registrations several times over the years.
Perhaps inevitably, one observer has written that ProFootball is calling the Trademark Office an “Indian giver.” These arguments were part of a motion for summary judgment filed by Pro-Football in the lawsuit last week. The motion, in effect, asks the question that I have posed here before: Why on earth do we ask trademark attorneys to pass judgment on what is “immoral” or what “may be” disparaging? Dickinson Wright Offices Detroit 500 Woodward Ave. Suite 4000 Detroit, MI 48226 Phone: 313.223.3500 Nashville 424 Church St. Suite 1401 Nashville, TN 37219 Phone: 615.244.6538 Grand Rapids 200 Ottawa Ave., NW Suite 1000 Grand Rapids, MI 49503 Phone: 616.458.1300 Columbus 150 E. Gay St. Suite 2400 Columbus, OH 43215 Phone: 614.744.2570 Phoenix 1850 North Central Ave. Suite 1400 Phoenix, AZ 85004 Phone: 602.285.5000 Lansing 215 S.Washington Square Suite 200 Lansing, MI 48933 Phone: 517.371.1730 Las Vegas 8965 South Eastern Ave. Suite 280 Las Vegas, NV 89123 Phone: 702.382.4002 Toronto 199 Bay St., Suite 2200 Commerce Court West Toronto ON M5L 1G4 Phone: 416.777.0101 Music Row 54 Music Square East Suite 300 Nashville TN 37203 Phone: 615.577.9600 Las Vegas - Sunset 8363 West Sunset Rd. Suite 200 Las Vegas, NV 89113 Phone: 702.382.4002 Washington, D.C. 1875 Eye St., NW Suite 1200 Washington, DC 20006 Phone: 202.457.0160 Saginaw 4800 Fashion Square Blvd. Suite 300 Saginaw, MI 48604 Phone: 989.791.4646 Lexington 300 W.
Vine St. Suite 1700 Lexington, KY Phone: 859.899.8700 Ann Arbor 350 S. Main St. Suite 300 Ann Arbor, MI 48104 Phone: 734.623.7075 Troy 2600 W. Big Beaver Rd. Suite 300 Troy, MI 48084 Phone: 248.433.7200 .
As regular Brandmarking readers know, trademark rights arise from actual use of the mark in commerce. As I tell my law students, it’s the Forrest Gump principle: “Trademark Is as Trademark Does.” When you adopt a name, or a slogan, or a logo, and use it to identify your goods and services in the marketplace, it becomes your trademark and you automatically gain common law trademark rights. Registration enhances and perfects those rights. But as we learned from the Washington Redskins case, the fact that the government takes away your registration doesn’t mean you can no longer use your trademark. So, just to set the record straight: Taylor Swift did not “trademark” her song lyrics.
She applied to register her song lyrics as trademarks. SPEAKING OF THE REDSKINS… It’s been almost a year since the Trademark Trial and Appeal Board ordered the cancellation of six registrations owned by the professional football team that include the word REDSKINS. As expected, ProFootball appealed, in the form of a lawsuit filed in U.S. District Court for the Eastern District of Virginia.
In addition to simply arguing that the TTAB arrived at the wrong decision, Pro-Football also argues that the statute on which the challenge was based – Section 2(a) of the Lanham Act, which permits cancellation on grounds that a trademark “may be…disparaging,” – is unconstitutional: Noting that trademarks are “commercial speech” protected by the First Amendment, Pro-Football argues that Section 2(a) impermissibly penalizes it for taking the position, in public discourse, that using REDSKINS as a team name is not disparaging but a sign of respect. • Pro-Football also argues that the statute is unduly vague, noting that the term “disparaging” has a variety of dictionary definitions, none of which is formally specified by the statute, and that no one can reasonably anticipate whether the Trademark Office, or a court, would find that any particular term “may be” disparaging. • She did this by taking advantage of a provision of the Trademark Act that permits you to apply to register trademarks you haven’t used yet but that you have a “bona fide intent” to use in the (relatively) near future. In effect, you can reserve rights in a trademark for up to three years while you decide what you really want to do with it. In the meantime, the rest of the world is on notice of your claim of rights, and needs to think twice before using your mark on its own products. It’s a strategy that any business should consider for goods and services that are still on the drawing board. • Pro-Football also argues that the statute unfairly allows the TTAB to cancel its registrations now, devaluing an asset that ProFootball spent millions of dollars developing, even though the first of the registrations issued almost 50 years ago, and the Trademark Office has renewed all of the registrations several times over the years.
Perhaps inevitably, one observer has written that ProFootball is calling the Trademark Office an “Indian giver.” These arguments were part of a motion for summary judgment filed by Pro-Football in the lawsuit last week. The motion, in effect, asks the question that I have posed here before: Why on earth do we ask trademark attorneys to pass judgment on what is “immoral” or what “may be” disparaging? Dickinson Wright Offices Detroit 500 Woodward Ave. Suite 4000 Detroit, MI 48226 Phone: 313.223.3500 Nashville 424 Church St. Suite 1401 Nashville, TN 37219 Phone: 615.244.6538 Grand Rapids 200 Ottawa Ave., NW Suite 1000 Grand Rapids, MI 49503 Phone: 616.458.1300 Columbus 150 E. Gay St. Suite 2400 Columbus, OH 43215 Phone: 614.744.2570 Phoenix 1850 North Central Ave. Suite 1400 Phoenix, AZ 85004 Phone: 602.285.5000 Lansing 215 S.Washington Square Suite 200 Lansing, MI 48933 Phone: 517.371.1730 Las Vegas 8965 South Eastern Ave. Suite 280 Las Vegas, NV 89123 Phone: 702.382.4002 Toronto 199 Bay St., Suite 2200 Commerce Court West Toronto ON M5L 1G4 Phone: 416.777.0101 Music Row 54 Music Square East Suite 300 Nashville TN 37203 Phone: 615.577.9600 Las Vegas - Sunset 8363 West Sunset Rd. Suite 200 Las Vegas, NV 89113 Phone: 702.382.4002 Washington, D.C. 1875 Eye St., NW Suite 1200 Washington, DC 20006 Phone: 202.457.0160 Saginaw 4800 Fashion Square Blvd. Suite 300 Saginaw, MI 48604 Phone: 989.791.4646 Lexington 300 W.
Vine St. Suite 1700 Lexington, KY Phone: 859.899.8700 Ann Arbor 350 S. Main St. Suite 300 Ann Arbor, MI 48104 Phone: 734.623.7075 Troy 2600 W. Big Beaver Rd. Suite 300 Troy, MI 48084 Phone: 248.433.7200 .
