Do Not File a Trademark Application For a Trending Rallying Cry

Do Not File a Trademark Application For a Trending Rallying Cry

One of the side effects of social media has been a rise in various forms of online activism. We typically encounter it in the form of a phrase or slogan – often attached to a hashtag – used as a message to create awareness, share information and organize action around a particular cause or issue.

As I write this post, the viral rallying cry of the moment is “Je Suis Charlie” or “I am Charlie” as a message of “condolence, outrage and defiance” and “show of support for free expression” over the deadly attack on French satirical magazine Charlie Hebdo.

Je_suis_Charlie,_Paris_11_January_2015_(3)

Photo Source: Olivier Ortelpa

Sadly, and inevitably it seems – as evidenced by recent rallying cries BOSTON STRONG, OCCUPY WALL STREET, HANDS UP DON’T SHOOT and I CAN’T BREATHE – someone will file a trademark application for JE SUIS CHARLIE in a misguided attempt to claim exclusive rights to the phrase.

I hope I’m wrong.

It generally takes about a week for trademark filings at the U.S. Patent & Trademark Office (USPTO) to appear in its public database. It is still too soon to know if anyone has filed another futile application.

I write this post on the off chance that anyone considering filing a trademark application for JE SUIS CHARLIE — or any future trending rallying cries — finds it, reads it and reconsiders. Here’s why:

  • The USPTO will refuse your application.
  • You will not get your money back.
  • You may be publicly ridiculed.

So don’t even try. It’s as simple as that.

Let me explain.

Trademarks are source identifiers. They point to a single source for certain goods and/or services. Common and popular rallying cries fail to function as trademarks because the public does not identify them with a single source. Instead, the public views them as conveying an informational message about the cause or issue being addressed.

To illustrate, here are several recent USPTO trademark applications that were refused on the ground that the marks were merely informational slogans:

  • OCCUPY WALL STREET — refused as merely informational matter that refers to a nationally recognized political movement
  • BOSTON STRONG — use of the slogan has become so widespread and ubiquitous consumers will not perceive it as a trademark
  • HANDS UP DON’T SHOOT — “consumers are accustomed to seeing this slogan commonly used in everyday speech 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”

Trademark Manual of Examining Procedure (TMEP) § 1202.04 guides the Examining Attorneys’ refusals, which cite §§1, 2, and 45 of the Lanham Act (or §§1, 2, 3, and 45 for services) as the statutory basis for refusal.

Applicants must also realize that there is no right to confidentiality in the information disclosed in a USPTO trademark application, including your name and address. The press may come calling. You may get trolled on social media. You will upset masses of people who feel the phrase is part of something much larger than any single person or entity’s business ambitions. They will be repulsed by your actions. I wonder how the woman who filed the I CAN’T BREATHE trademark application feels about all the negative attention she has received.

Photo by Noel Vasquez/GC Images

Photo by Noel Vasquez/GC Images

Eventually, when it is reviewed, her I CAN’T BREATHE application will be rejected on the same ground the slogans listed above were refused (so will the later-filed #ICANTBREATHE application) – regardless of what the University of Chicago law professor says in this article:

University of Chicago law professor Jonathan Masur said if Crump was not the first person to produce “I Can’t Breathe” T-shirts and hoodies, she will not receive the trademark, even if she was the first to apply and regardless of whether anyone else files.

“If she’s not the first person to make these T-shirts, she’s going to be out of luck,” Masur said.

… If someone successfully trademarks the phrase “I Can’t Breathe” for clothing, Masur said, “It’s conceivable it could be worth a considerable amount of money. They could make a tidy sum.”

Inconceivable!

And wrong … on so many levels. The only thing that’s conceivable is this kind of thinking got us here in the first place. It bothers me that this ridiculous quote, from a law professor at an esteemed university, was picked up by most major media outlets in reporting on the story. It will only lead to more dead on arrival copycat filings.

Understand that it does not matter if you were the first to market and sell goods under a commonly used rallying cry. For the reasons detailed above, your trademark application at the USPTO will NOT be approved. Plus, there is no “tidy sum” in developing a brand around monopolizing the name for a social movement (be it a dying man’s last words or a phrase now synonymous with free expression). Remember the ICE BUCKET CHALLENGE fiasco? It’s a distasteful approach to branding and there is no profit in it. You will lose more than you will gain – and I mean that beyond mere dollars.

But wait, there’s more!

Since the “Charlie” in “Je Suis Charlie” is a reference to French magazine Charlie Hebdo, a USPTO Examiner should also issue a false suggestion of connection refusal under Section 2(a) of the Lanham Act.

We have seen similar 2(a) refusals in the following applications:

  • JUSTICE 4 TRAYVON — refused because mark consists of or includes matter which may falsely suggest a connection with the estate of the recently deceased Trayvon Martin
  • MH17 — the mark is a close approximation of the recent tragedy involving Malaysia Airlines Flight 17. “The term at issue need not be the actual, legal name of the party falsely associated with applicant’s mark to be unregistrable under Section 2(a).”
  • LINSANITY — “the term LINSANITY has been so widely used in connection with Jeremy Lin that consumers would presume a connection to Mr. Lin if they see the term LINSANITY on the identified goods”

See TMEP Section 1203.03(c).

Notably, the USPTO allowed Trayvon Martin’s mother to register I AM TRAYVON (the registration was transferred to a foundation established by his parents). Similarly, LET’S ROLL was registered by the Todd M. Beamer Memorial Foundation in the wake of 9/11. That registration has since lapsed and is now cancelled. The USPTO has granted approval where there is a direct connection between the origin of, or reference in, the slogan and the applicant.

For everyone else though, there is no point in filing an application to register a trademark on the latest celeb/sports catchphrase du jour or the trending tragedy or common cause of the moment. Sure, you may get away with ornamental use on t-shirts, hats and other novelties, as many will do, and maybe a professional sports team will buy your loot and wear it on TV! All in the name of social awareness.

Maybe.

But you still won’t own any enforceable trademark rights. So just drop the notion you have of trying to capitalize on a popular rallying cry or trendy slogan by seeking federal trademark rights. It’s a bad idea.

Disclaimer: this is a blog post NOT legal advice … but if you contact me for advice and retain me, I’ll tell you the same thing I’ve written above or just save myself the spiel and direct you to this post.

© Roberto Ledesma

UPDATE (Jan. 13, 2015): A Belgian resident filed a trademark application for JE SUIS CHARLIE in the Benelux. Here is the application. World Trademark Review offers an overview on how European law would apply.

UPDATE (Jan. 14, 2015): The first U.S. trademark application for JE SUIS CHARLIE becomes public. Here is the application. Fittingly, it appears the attorney of record has been disbarred by the State Bar of California for “unmeritorious” filings. See here.

UPDATE (Jan. 16, 2015): OHIM (the agency for European Union-wide trademark protection) issues notice that it “would probably” reject a JE SUIS CHARLIE trademark application. And World Intellectual Property Review reports that it has spoken to the applicant and attorney for the U.S. JE SUIS CHARLIE trademark application, who sees “no reason” why the application would be rejected and claims to have sent a cease and desist letter to Charlie Hebdo. The grounds or reason for his letter are “unclear.”

UPDATE (Jan. 21, 2015): Another doomed U.S. trademark application for JE SUIS CHARLIE.

UPDATE (March 28, 2015): Both JE SUIS CHARLIE trademark applications in the U.S. were preliminarily refused (see 1 and 2)

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