It happens all the time.
You own a business.
You notice that a certain phrase has become really popular.
You try to use trademarks to monopolize that phrase.
As a trademark law firm that works with creatives, this is something we’re seeing a lot. Especially in today’s political climate.
There have been seven federal trademark applications filed for “NEVERTHELESS, SHE PERSISTED,” a phrase popularized by the now famous quarrel between Senators Mitch McConnell and Elizabeth Warren. Every one of these applications have rejected or are under refusal.
To quote a response letter from the trademark office:
The more commonly a term or slogan is used in everyday speech, the less likely the public will use it to identify only one source and the less likely the term or slogan will be recognized by purchasers as a trademark or service mark. . . . Because consumers are likely to have seen this phrase commonly used by many different sources, the public will not perceive the slogan as a trademark that identifies the source of applicant’s goods, but rather only as conveying an informational message: that the consumer or purchaser supports the ideas and messages conveyed by rallies and organizations dedicated to advancing women’s rights.
There have been 38 federal trademark applications filed that include the word, “COVFEFE,” a famous typo in a tweet from President Trump. The trademark office has used similar language in refusing those applications.
There have been 15 federal trademark applications filed that include the phrase, “METOO,” a hashtag used on social media that has shed a powerful light on the prevalence of sexual harassment. (To be fair, many of them were filed before the #metoo movement began.) While the trademark office has not yet issued a response to these applications, a large brand just withdrew its application.
Hard Candy learned its lesson.
On October 20, 2017, beauty brand Hard Candy applied for “#METOO” as a trademark to sell cosmetics and fragrances. (They must have acted quickly, as the hashtag started spreading that same month.)
On January 18, it requested to abandon the application.
This was a pretty quick news story. On January 17, TMZ broke the news of Hard Candy’s trademark application. They reported that Hard Candy intended to use the trademarked #MeToo line to donate proceeds to the #MeToo movement.
Hard Candy has since issued the following statement:
As a brand devoted to women since its inception, Hard Candy has and will continue to support women’s rights. Hard Candy has always quietly and proudly supported a non-profit organization that directly contributes to many women’s causes. When the trademark application for #MeToo was filed, one of our objectives was to bring greater awareness to this important and long overdue movement. We planned to donate 100% of all profits arising from this trademark to #MeToo. Based on several public responses, we have abandoned the application. We will continue to support the work of this watershed movement and other causes that respect the dignity of women and all people.
Apparently, Hard Candy abandoned its application after a public backlash and outrage against the brand. Even if the choice to abandon it was a PR decision, they would probably have been refused anyways on legal grounds.
If you’re a creative business owner, please understand the following three things about trademarks:
- Trademarks aren’t meant to protect popular phrases. As the attempts to trademark “NEVERTHELESS, SHE PERSISTED,” “COVFEFE,” and “#METOO” show, trademarks are not meant to protect popular phrases. Remember these words that come directly from the trademark office: “The more commonly a term or slogan is used in everyday speech, the less likely the public will use it to identify only one source and the less likely the term or slogan will be recognized by purchasers as a trademark or service mark.”
- Trademarks don’t protect ornamental or decorative use. If you sell shirts, mugs, or any other items with words or phrases on them, understand that trademarks do not protect “ornamental use.” Trademarks indicate the source of the goods. If your buyer is likely to think that a phrase written across on an item is being used decoratively, that phrase is not operating as a trademark. Don’t try to use trademark applications to exclude others from using phrases ornamentally.
- Even if you coined a phrase that has become popular, be careful with trademarks. If you are the one who has coined a phrase that has become popular, you should consult with an attorney about whether or not to protect that phrase as a trademark. Understand that (1) trademarks are not meant to inhibit competition in the marketplace, and (2) owning a trademark over a popularized phrase means you have to enforce your rights—you take on the possibility of costly infringement suits in order to maintain your trademark rights.
Note: Yes, you caught me. “Trademark” shouldn’t be used as a verb, and you should take a minute to watch this video to understand why that’s important. That said, it’s a lot easier to write readable sentences when you do. Know the rules, then you can break them. 😉