Whenever there is some major media event or news story (“Deflategate” or “Ice Bucket Challenge”, just to name a few), it always seems like there are enterprising people that are waiting in the wings to turn a quick profit off of the phrase. And what better way to get a nice tidy profit than to get a trademark on a phrase and secure that highly coveted monopoly giving you the power to emblaze the phrase “I Like Turtles” on every street corner in America?
The latest phrase stems from Cecil, the lion that was killed by a hunter. Just within the past week, three different applicants have applied for registration of the phrase “Cecil the Lion”.
If a trademark can be registered for any phrase, and the means for doing it are available (ahem, Legal Zoom), most people figure, “What the heck”. They are only out $500, and a monopoly on a phrase is certainly worth that much. Much like domain name opportunists in the late 1990s, where a person could snatch up names like “sofas.com” and “travel.com” for $10 or less and sell for millions, some people figure they can get the trademark and either leverage it themselves or license it to someone else.
Here’s the thing. The economics of such a strategy may not play out because there are real costs to getting and maintaining a trademark. Not only do you have to pay to file a trademark, you have to use the mark meaningfully in connection with a business in order to get the registration and maintain it. I venture to guess that many people who file a trademark application on the spur of the moment aren’t willing to put in the time to develop a bona fide business. Running a merchandising business (which is what most businesses surrounding an opportune phrase will be based on) requires a mastery of supply chain management, logistics, and marketing. This is definitely not a case of “if you build it [the trademark], they will come.”
It also costs real money to monitor the mark, which will be necessary to keep exclusive rights in the phrase. Many people often underestimate these costs or, alternatively, the energy and man hours required if you choose to forego the traditional option of having an attorney find the infringement, review it, and send out the proper letter (never mind the costs of elevating enforcement action to the lawsuit stage, which happens more often than you might think).
So you see trademark opportunism is only loosely related to domain name opportunism. At least with domain names the maintenance costs are low and you don’t need a business backing the domain name in order to keep it. Moreover, opportune phrases are often registered at the cresting of the wave of public awareness, which is a time when people are generally aware of the trademarked phrase. When the media frenzy involving the phrase dies down (which it usually always does), the trademark owner will be left with the responsibility of holding up the phrase and making sure it is still relevant or attractive to consumers.
As for the “Cecil the Lion” trademark applications (each of which may pose conflicts to the other applied-for marks based on a likelihood of confusion), one may emerge victorious and may even go on to be a viable mark if the owners can figure out a way to monetize it. If they don’t make goods under the mark themselves, one could see such a mark being licensed to a zoo or non-profit organization that raises awareness about poaching through the sale of novelty items made in Cecil’s likeness (fortunately, you don’t need the permission of animals to make products in their likeness, like you would for people).
So next time you get the itch to file an application with the trademark office, make sure to carefully consider all of the possible costs involved in both filing the trademark, and using it. This is not a definitely not a way to get-rich-quick.
This thing called “Obamacare”, you might have heard about it. Before you leave the page thinking this just a political rant about the merits or absurdities of the healthcare law known as Obamacare, lend me your ears. The trademark angle is slightly more colorful than a more typical blog posting on tax and constitutional controversies (trademark law is so interesting.... and fun. I like to think it is important too, even if it isn’t as heady as constitutional law).
There have been a flurry of trademark applications that include the word “Obamacare” for just about everything. That is not a euphemism. Literally, almost every type of good and service you could imagine. Everything from television talk shows to undergarments. This is just another example of how trademarks mirror pop culture as people hope to capitalize on a coined phrase or trending keyword and become as famous as that guy who put the smiley face on a t-shirt all those years ago. But many times, there attempts fail for one of a few reasons, some of which I have discussed in previous posts). When it comes to phrases that incorporate the names of famous people, the main reason that the trademark application is refused is because inclusion of the famous person’s name in the trademark implies false association or endorsement.
I am in front of the computer most of the day at work. This means my eyes get very tired. Sometimes when my eyes get tired, I feel the need to take breaks. When I take breaks, I sometimes fumble around and find odd things at my desk just to kind of entertain myself and save my eyes from becoming totally blurry. So I picked up one of these paper clip things. (I know what you’re saying: you took a five minute break and the best thing you could think to do was play with a paperclip?!) What can I say, I’m a true paper pusher!
Back to the paper clips, you might have seen them before. They don’t have the ordinary shape of regular metal paper clips and they are plastic which means they won’t discolor paper when you attach them to paper. The name on the top of the clip says “Plastiklips”. What an exciting (and nuanced name)! Its genius, I mean why didn’t I think of it? Calling a plastic paper clip “Plastiklip”. So fanciful. So catchy. So descriptive.
Then I got to thinking (also while on my break, well maybe on my next break): did somebody get a trademark on this? So being the trademark buff that I am, I made a trip to the USPTO website and ran a search for “Plastiklips” and, sure enough, up pops this trademark registration:
Now this just seems odd to me because, well, the trademark is registered for “plastic paper clips”. On the principal trademark register, no less. A trademark , “plastiklips” for “plastic paper clips”. ‘What’s the big deal?’ you might ask. Generally, a trademark cannot describe the goods that it is used on. Marks like “Blackoil” for goods such as synthetic oil that is black in color are not eligible for registration, at least not right off the bat. These kinds of trademarks are only eligible for registration if they have acquired what is called “secondary meaning”, meaning (sorry) that consumers attribute the trademark to a particular source. Descriptive terms which have acquired secondary meaning (and are now considered trademarks) include HOLIDAY INN, AMERICAN GIRL, and ALL BRAN.
But not every trademark can acquire secondary meaning. It’s not one of those things that just happens. Trademark owners sometimes have to invest significantly in marketing and may even have to obtain a consumer survey (which can be hugely expensive). Seem like an unfair burden to place on someone who put their creative juices to coming up with a slick trademark? Imagine the hardships in the marketplace that would ensue if words that described a class of goods was trademarked? Wouldn’t other makers of products who wanted to describe their goods using the same descriptive word run afoul of the trademark owners’ rights? This problem has cropped up time and time again where one company has a descriptive trademark and they try to prevent some other company (usually a competitor in the same field) from using the trademark.
This strategy of enforcing a descriptive mark can get dicey, though, because a competitor that is using the descriptive trademark on their goods could file a petition to cancel the trademark owners’ descriptive mark. And unless the trademark owner has some pretty compelling evidence showing that the trademark has acquired secondary meaning, the trademark could be invalidated for all to use. This is exactly what happened in the case of the battle over the mark FISH FRI where Zatarains’ trademark registration for the FISH FRI trademark was cancelled by another food company which wanted to use “FISH FRY” for food frying stuff. Zatarain’s got fried alright!
Getting back now to my paper clip inquiry, what of the viability of the PLASTIKLIPS trademark? I found this other paper clip company that makes the same type of plastic paper clip, but uses the name “Plastic Clips”. Of course, they haven’t tried to get a trademark for this name (any attorney that took that case would be engaging in gross malpractice), but isn’t “Plastic Clips” pretty much identical to PLASTIKLIPS? Seems nearly identical phonetically and conceptually. If the two trademarks are similar, that seems like a recipe for an infringement suit doesn’t it? Unless you have a descriptive trademark like PLASTIKLIPS and you are holding on to that registration as the last great vestige of hope in your paper clip empire!
Seriously though, I don’t think I would waste the money on a lawsuit against a company that used the phrase “Plastic Clips” for their product, especially if I knew I was going to lose. This all begs the question though: why does the owner of the PLASTIKLIPS mark continue to renew their trademark? Maybe it’s a clip of nostalgia on the part of the owner. Who knows.
Anyways the takeaway is that if you are going to use a descriptive word or phrase as your trademark, make sure that you are ready to expend the significant resources that it takes to prove that your mark has acquired secondary meaning. As they say in sports, go big or go home.