But Green is now taking lemons and turning them into lemonade by doing what so many others have done when they come to be associated with a phrase that captures the public’s attention – seeking to register the mark with the United State Patent and Trademark Office (“USPTO”).
On November 28, 2007, Green filed a Section 1(b) intent-to-use application for the mark THEY ARE WHO WE THOUGHT THEY WERE for the following goods and services: 1) Hats, caps, baseball caps, knitted caps, golf caps, sports jerseys, t-shirts, polo shirts, sport shirts, sweatshirts, golf shirts, sweat bands, sweat pants, jogging pants; and 2) Educational and motivational public speaking services.
Because the basis of the application is intent-to-use, the application will likely get to the publication phase. However, ultimate registration will depend on the specimens of use submitted and whether the mark is truly being used as a source identifier.
As so often happens with trademark applications seeking to register a slogan or phrase to put on clothing items, the USPTO may refuse registration on the grounds that the mark is merely ornamentation that consumers are likely to perceive as conveying a message rather than indicating the source of the goods or to distinguish the goods from those of others. See In re Owens-Corning Fiberglass Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985); Damn I’m Good Inc. v. Sakowitz, Inc., 514 F. Supp. 1357, 212 USPQ 684 (S.D.N.Y. 1981).
I previously wrote about the trademark application for the phrase COWGIRLICIOUS (link here) where registration was refused because the mark was used in the submitted specimen was merely ornamental. In that case, the applicant submitted a picture of T-shirt with the word “COWGIRLICIOUS” in the middle of the shirt. Such use was found to be more of a slogan and by its size and location in the middle of the shirt would not be perceived as a source identifier or as a trademark which identifies applicant’s goods and distinguishes such goods from those of others. The larger the display of the mark relative to the size of the goods, the more likely that consumers will not view it as a mark. In addition, the location of where the mark is fixed on the goods is a consideration of how it will be viewed by the public. Where consumers are used to seeing a trademark in certain locations on clothing (i.e. collar label for shirts, above or on the rear pocket for jeans), consumers are less likely to perceive the mark as a source indicator when such mark is placed in a location that is less often associated with a brand name (i.e. the breast area of a shirt).
In order to overcome such an ornamental rejection, an applicant must --a) argue and submit evidence showing that the mark has become distinctive of applicant’s goods (Section 2(f) acquired distinctiveness argument);b) submit evidence that the mark would be recognized by the public as a trademark through applicant’s use of the mark with goods or services other than those identified in the application (the mark is an indicator of secondary source or sponsorship);c) amend the application to seek registration on the Supplemental Register; ord) submit a new specimen showing non-ornamental use.
For clothing, the PTO usually accepts use of the mark on clothing tags. Such use was accepted for Paris Hilton’s THAT’S HOT and for Dorothy Tovar’s WHAT HAPPENS IN VEGAS STAYS IN VEGAS (before it was cancelled).
As for Green’s use of the phrase as a service mark, the PTO will still require the mark to be used in a manner that would be perceived by purchasers as identifying and distinguishing the source of the services recited in the application. The PTO may register such a service mark only to the extent that Green uses the phrase to advertise his public speaking services in a way that makes a commercial impression separate from that of the other elements of advertising material upon which it was used, such that the designation would be recognized by prospective customers as a source identifier.
Nonetheless, if the PTO will not allow registration on the Principal Register, Green may wish to opt for registration on the Supplemental Register (see previous blog entry here regarding the benefits of registration on the Supplemental Register). Such registration will at least prevent anyone else from registering a similar mark with the USPTO.
But my favorite “phrase-du-jour” trademark application filed this year is probably “DON’T TAZE ME BRO!” I don’t know if the applicant, Franchise Institute, Inc., has any connection to Andrew Meyer, the student who became famous when he exclaimed those words during a John Kerry speech at the University of Florida, or to Bob McCarty, who already has a thriving online business selling shirts with the slogan, but I would suspect the application to face a similar ornamental challenge.