By Daniel Cruz Hernandez and Adam Freedman
Recently, it has become common for people to think it’s a good idea to Trademark a celebrity’s name or famous phrase, to capitalize on its mainstream appeal and sell merchandise, or even sell it “back” to the celebrity in the future. However, as many of these people surely wish they knew sooner, a celebrity automatically has “common law” Trademark protection over his or her famous phrase as soon as it is used “in commerce.”
Using a Trademark “in commerce” means, for example, actually selling merchandise that uses the phrase.
Therefore, registering the Trademark to someone else’s famous phrase is not only going to most likely be a waste of time and money, but it could still even create grounds for a Trademark infringement lawsuit FROM the celebrity.
Brief Overview of Trademarks
A Trademark can be any word, phrase, slogan, or symbol that identifies the source of a good or service. Having a Trademark associated with a brand can be the most powerful way for a brand to build trust and confidence in their products or services and to distinguish them from competitors — but Trademark protection is only awarded to brands who have developed a commercial reputation that consumers closely associate with the brand specifically.
A common misconception is that a name or phrase must be registered with the United States Patent and Trademark Office (USPTO) to be protected by Trademark law and to prevent others from using the mark. Registering a Trademark does have its benefits, such as notifying the world of the existence of the Trademark and the right to bring a lawsuit in federal court for “statutory damages” (more money). However, without registration, you can nevertheless still sue someone for Trademark infringement.
Why Registering Someone Else’s Trademark is a Bad Idea
The purpose of Trademark protection is, ultimately, to protect whoever has the best claim that when consumers view the mark, they associate it with that specific brand. Even if a celebrity hasn’t sold merchandise with his or her famous catchphrase, the celebrity may still be entitled to Trademark protection simply due to his or her notoriety. At a certain point, a celebrity’s catchphrase becomes so generally known that a Trademark application coming from a third party is clearly trying to capitalize off that celebrity’s fame.
One recent example of how a Trademark dispute is handled by the USPTO involves former New York Knick, Jeremy Lin. In 2012, Lin had one of the most impressive months in NBA history and he was widely associated with the nickname/phrase “Linsanity.” After the remarkable month, at least 10 people thought it was a good idea to file an application to Trademark “Linsanity” — but all were denied. The only successful Trademark application came from Jeremy Lin himself.
To the other 10 applicants, the examiners at the USPTO all responded saying generally the same thing: “the term LINSANITY points uniquely and unmistakably to Jeremy Lin…because he is so well-known that the public would assume a connection.” These applicants could move forward if they could provide Jeremy Lin’s approval. Of course, none were able to do so.
There are some instances where the USPTO may allow a Trademark to contain a celebrity’s name or phrase because those uses happen to be in very different areas from those in which the celebrity exists. For instance, when quarterback Tom Brady was traded to the Tampa Bay Buccaneers, he was widely associated with the nickname “Tampa Tom.” A handful of people attempted to Trademark “Tampa Tom,” and almost all were denied.
The one exception was a real estate agent in Tampa Bay whose name was Tom. Since the real estate agent operates his business in a completely different market from the ones in which Tom Brady commercializes his nickname (media, clothing, etc), the Trademark office allowed the real estate agent’s Trademark to be registered. Remember — the point of a Trademark is to prevent consumer confusion, and here it would be unlikely that consumers would assume the real estate company was Tom Brady’s just through its name “Tampa Tom.”
Fortunately, one of the main purposes of Trademark law is to stop people from unfairly benefitting from another person or company’s fame, reputation, or general goodwill. If you are attempting to register the Trademark to a celebrity or athlete’s nickname or famous catchphrase, in hopes of then selling it back to the celebrity, will almost certainly be denied by the USPTO. Even if that celebrity isn’t selling merchandise using his or her catchphrase, and you are, the USPTO will most likely still deny your application. Not only will the USPTO deny your application, but depending on the situation, all of that could expose you to a potential lawsuit from that celebrity for Trademark infringement.