Can You Cash in By Claiming a Trademark on a Trending Nickname, Slang Word, or Phrase?

It’s as predictable as the sunrise. Some new trending term bubbles up – a new celebrity nickname, or a slang word or phrase – and people rush to the U.S. Trademark Office to file trademark registration applications covering it. For example, 51 people applied to register YOLO (“you only live once”).

Can you register a trademark on a trending term? If so, would that give you a monopoly on commercializing it and enable you to stop others from doing so?

The Supreme Court just decided a case that gives a partial answer. It concerned a vulgar moment during the 2016 presidential campaign.

Florida Senator Marco Rubio accused Donald Trump of having small hands and implied that meant a different, private part of his anatomy was also tiny. That insult inspired entrepreneur Steve Elster to apply to federally register the mark TRUMP TOO SMALL for T-shirts.

The federal Trademark Office rejected Elster’s application based upon the “Names Clause” in the Lanham Act, which is the federal trademark law. That clause prohibits federally registering a mark that contains someone else’s name without that person’s permission. Elster argued this refusal violated his First Amendment right to free speech because his purported mark criticized Trump.

Elster won in a federal appellate court. The Supreme Court just unanimously reversed that decision.

The justices agreed that the Names Clause isn’t content neutral because it prohibits registration of marks that contain certain subject matter, specifically the names of third parties used without consent. However, the Justices also agreed that this lack of content neutrality did not violate the Free Speech Clause in this situation, although they disagreed as to why.

What does this ruling mean for those looking to cash in trending terms? You must know a few things about trademark law to answer that question.

It’s really consumer protection law. Something is a mark only when it functions as a source identifier – it enables the public to know who made the product bearing the mark or performed the service branded with it. This permits consumers to judge the likely quality of what they buy based on the manufacturer’s or service provider’s reputation. For example, if you buy an expensive hiking garment bearing the PATAGONIA brand, you probably know of that company’s reputation for well-made goods.

If what you claim as a mark doesn’t function as a source identifier, you have no mark rights and can’t get a registration. That’s the case when something is just a commonplace message (e.g., DRIVE SAFELY), is merely informational (e.g., SAVE HERE ON GAS), or is the generic name for that thing or service (e.g., calling an automobile a CAR).

For the same reason, you can’t get a mark registration on a wording usage that only makes a statement but does not identify the source of the product, such as a cute phrase on the front of a T-shirt.

Also, even if you have mark rights, that doesn’t give you a monopoly on all uses of the term. Mark rights cover only the goods and services you sell or give away using the mark. When you apply to federally register a mark, you must list the goods and services you are branding with it.

Also, you can’t stop someone else from using an identical or similar word or phrase in a way that’s not a mark. For example, even if Elster got a mark registration for TRUMP TOO SMALL for a brand of T-shirts, he might not be able to stop other people from selling T-shirts that say TRUMP TOO SMALL on the front because consumers likely would perceive that phrase as just a political statement and not an indication of who made the T-shirt.

What are the takeaways here for entrepreneurs?

It’s a bad business idea to think you can make money by trying to claim a trending term as a mark. You probably can’t get a mark registration for it if you use it only as an ornamental statement on things such as t-shirts. Even if you get a registration, many uses by others won’t be uses as marks but instead will be just public commentary, so you probably can’t stop them.

On the other hand, trademark registration only strengthens trademark rights and is not a necessary precondition for using a trending term on a product.

But be careful. Anything you produce that uses someone else’s name, nickname, image, or likeness might make you liable for creating a false association with that person. Also, if someone else has somehow registered that trending term as a mark, that person could threaten you with litigation. While you might have a good chance of winning, litigating might not be financially worthwhile.

So don’t be fooled when you hear someone “trademarked” a trending phrase. The venture will probably fail “bigly,” and the entrepreneur will likely end up financially “Sad!”

Written on June 20, 2024

by John B. Farmer

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