That next big phrase could be connected with Anthony Weiner. In case you hadn’t heard, Anthony Weiner has done it again. Check out this trademark application filed two years ago for the mark RE-ERECT WEINER for t-shirts.
But, but…… what of my chances of making it big with this awesome phrase printed on every cheap $2 item known to man!? This gets us to the next portion of the office action, the portion dealing with the ornamental appearance issue. You see, for a phrase to be considered as a trademark, it has to, you know, actually indicate some source. It cannot be used as some sort of decorative phrase on merchandise. It has to say something about where the goods came from. This is why Anthony Weiner would have had to have given his consent to use of a phrase containing his name: people may have thought that the shirts came from him. So when you see a million other people on Café Press using phrases on all kinds of tchotchke items, the phrases on the shirts don’t have any trademark significance because nobody knows SalamanderShirts’ coffee mugs with “I Love N.Y.” from AlibabaTheGreat’s iPod cases bearing the same phrase.
"it is a common merchandising technique in [the U.S.] to license the use of character names and images as trademarks for a variety of products collateral to the product or services in respect of which the name or images are primarily known. Thus, while purchasers may be accustomed to seeing characters' names and images as part of the ornamentation of decals, T-shirts, and the like, they are also accustomed to seeing characters' names and images used as trademarks to indicate source of origin"
Besides, VOTE FOR PEDRO was tied to a very successful film that was critically acclaimed, mentioned numerous times in news reports, and grossed over $100 million between box office ticket sales and DVD sales. So there was likely significant secondary meaning between the phrase and the underlying film.
RE-ERECT WEINER, by contrast, is not tied to any particular source (except Anthony Weiner himself, which is why the USPTO demanded some sort of approval by Weiner for his name to be used as a mark). Perhaps the applicant for "RE-ERECT WEINER" would have been in better shape if he/she had applied for a different mark that wasn’t so obviously connected with Weiner, say the word “WEINER” itself (with the tagline Re-Erect being applied during the production of various items). However the applicant would still likely get an ornamental objection, if they were just using the word as a tagline on a shirt and not in the same way that HOLLISTER or ABERCROMBIE puts their names on the front of shirts. So trademark probably doesn't work (absent a showing of secondary meaning, that people equate the phrase with ONE source).
Thus the applicant would probably have to settle for copyright protection in the designs. Copyright protection in the phrase "Re-erect Wiener" itself is most likely out since the phrase is so short (no puns intended, get your mind out of the gutter!). This works out better for all those t-shirt entrepreneurs who want to make a buck quickly off their political satire because they can make their own shirts too with the phrase.
Sidenote: In case you thought you were going to pick up the phrase that is the subject of this blog post and run with it (no hurt feelings on my part, I don’t even have a Café Press site), it looks like somebody has already beat you to the punch. Somebody on Café Press is selling T-shirts, hats, and other tchotchke items with the phrase “RE-ERECT WIENER”. Nevertheless, the owner of this particular store has taken note of the proper I.P. protection for this particular creation by indicating that all designs are ©.