Celebrities Turn to Trademark Law for Brand Protection
April 15, 2015New Jersey Law JournalAttorney: Michael R. Yellin
What do pop music sensation Taylor Swift and Seattle Seahawks running back Marshawn Lynch have in common? If you answered that they dominated the news in late 2014 and early 2015, you would be right, but not just for the reasons you might think. Swift and Lynch not only made news for chart-topping record singles and spectacular football skills, they also made headlines for their decisions to turn to federal trademark law to protect their "brands."
Swift applied for trademark registration of popular song lyrics from her latest album, "1989" (e.g.,"could show you incredible things," "this sick beat," "'cause we never go out of style," and "Nice to meet you. Where you been?" among others). Lynch applied to register his Super Bowl XLIV maxim from earlier this year, "I'm just here so I won't get fined"—which he repeated no fewer than 29 times during his required Media Day appearance prior to the Super Bowl, in response to questions from the media.
While not the first celebrities to seek registration of trademarks to protect their brands (Britney Spears, Beyoncé and even Madonna have successfully applied for registration of trademarks in the past), Swift and Lynch are among the most successful and noteworthy. They have both applied for and obtained registration for other marks related to their respective businesses. Swift owns the registrations for five other marks, including her own name, "Taylor Swift," to protect everything from entertainment services to footwear, fragrances, backpacks, drum sticks, key chains and cellphone covers, among other categories. Lynch owns the registrations for two other marks, including his nickname "Beast Mode," to protect clothing, watches and sunglasses. Their similar approaches to marketing and promoting their brands raise the question whether this is the new way for celebrities to protect their names, lyrics and popular statements in today's social media climate. Federal trademark law is on their side and supports this approach to brand protection.
Trademark law provides that a trademark can be any word, phrase, logo or even just a symbol without words that is used by someone to distinguish his goods or services from those of others. Merely making a statement or writing a song does not give rise to a protectable trademark. However, when Swift and Lynch seek to use their words or lyrics to sell goods (like clothing) or services (like entertainment) across state lines, this gives rise to a protectable trademark.
While a trademark does not need to be registered with the United States Patent and Trademark Office (USPTO) to provide protection to the owner's goods or services, registration is certainly beneficial and affords a trademark owner certain rights not otherwise available, i.e., prima facie evidence that the mark is valid, in continuous use since the filing date, and its owner has the exclusive right to use the mark in commerce for the specified goods and/or services; and the ability to collect treble damages from a third party for infringement. As a result, Swift's and Lynch's registration of their marks affords them a federal cause of action in which they can collect treble damages against potential infringers who attempt to exploit their names, nicknames, lyrics and any other marks for which they may obtain registration. Without registration, a mark can still protect its owner's goods and/or services through federal and state unfair competition laws and at common law. However, if the elements of federal registration can be met, as they have been for Swift and Lynch in the past, then the benefits of such registration certainly outweigh any nominal costs associated with obtaining that registration.
The USPTO registers marks that are: (i) used in commerce (i.e., across state lines); (ii) actually used to identify the owner's goods or services; and (iii) not likely to cause confusion with a previously registered mark. There is an option to file an "intent to use" application for marks the owner is not currently using but intends to use in commerce; however, the applicant must always demonstrate actual use in commerce of the mark for the class of goods or services listed in the application prior to the USPTO's approving registration. After receiving an application for registration, the USPTO assigns an examining attorney to review the application and determine whether the mark is appropriate for registration for the class(es) of goods and/or services sought. Applicants have the option of seeking registration of their marks in one application for multiple classes of goods and services. However, if the application is deficient with respect to even one class, then the entire application is held up by the examining attorney for clarification. The applicant has the option to split the application for an additional fee; however, this nonetheless delays the registration process for the mark as a whole.
Apparently seeking to avoid any delays, Swift has filed separate applications for each class of goods and services of her marks. As a result, if the USPTO determines one mark is questionable for entertainment services (class 41) but poses no problem in the other classes, such as clothing (class 25), then the USPTO can proceed without delay to issue registrations for the marks in the nonproblematic classes. This is not the more common approach to the application process, however, it gets Swift the protection and rights attendant to trademark registration sooner for her brand.
From application to the issuance of a registration certificate, the registration process could take anywhere from one year to several years, depending on whether the applicant is using the mark in commerce at the time of applying for registration, and the legal issues that may arise during the examining attorney's review. Not all marks are fit for federal registration by the USPTO on the Principal Register. Swift inevitably realized this when she tried to obtain registration for the mark "Love, Love, Love," first in 2007 and again in 2010. Swift abandoned both applications: the first time after she exhausted her extensions of time permitted to file a statement of use; and the second time after the USPTO advised her that the proposed mark was likely to cause confusion with a previously registered mark by L'Oreal, "Amor Amor," covering the same class of goods, namely fragrances, and claiming use as early as 2002. Trademark law provides that "use" determines priority, and as a result, the USPTO examining attorney rejected Swift's proposed registration in light of L'Oreal's prior use and registration. Thereafter, Swift abandoned her application for "Love, Love, Love." Swift and Lynch have undoubtedly turned to federal trademark law to benefit from this type of review of their marks by examining attorneys, as well as the ability to turn to the federal courts to protect their brands if third parties seek to exploit them for monetary gain or otherwise.
Trademark law is designed to protect a business's commercial identity and goodwill. As the consumer world we live in becomes dominated by 24/7 media coverage, news and advertisements that are pushed directly to our devices, savvy businesses and people develop ways to dominate the headlines and market their brands. Whether seeking protection for the catchy part of a pop song, or for a phrase repeated so often that it becomes ingrained in our culture, Swift, Lynch and others like them, have turned to trademark law to protect their brands, however those brands are defined or redefined over time. Their challenge will be to keep those brands relevant because, contrary to Swift's lyrics, songs and antics quickly do "go out of style."
McDonough and Yellin are associates in the Litigation and Intellectual Property Departments at Cole Schotz in Hackensack.
Reprinted with permission from the April 15, 2015 issue of the New Jersey Law Journal. © 2015 ALM Media Properties, LLC. Further duplication without permission is prohibited. All rights reserved.
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