Can You Trademark “You're Fired!” and Other Sayings?
Can You Trademark “You're Fired!” and Other Sayings?
“Signature” sayings have increasingly become important in brand-building and marketing over the past decade or so. If you have or would like to have your very own catchphrase as part of your business, you might also consider trademarking it.
What is a Signature Saying?
A “signature” saying or catchphrase is an expression used by a person or fictional character with such frequency that it becomes linked to that person or character in the public's mind. As with any other trademark, the use that qualifies a catchphrase for trademark protection is commercial use, and for federal registration, that use has to be in interstate commerce.
For example, Paris Hilton has registered “That's Hot” with the United States Patent and Trademark Office (USPTO) for use in connection with entertainment services and alcoholic beverages (and, presumably, the combinations of the two for which she is infamous). Hilton brought a right-of-publicity action against Hallmark Cards when they used a picture of her and her catchphrase on a card. Hilton sued for trademark infringement, right-of-publicity violations, Lanham Act violations and invasion of privacy. The parties eventually settled out of court in a confidential settlement. Another example is Charlie Sheen's “Duh, Winning,” which, along with several of his notable turns of phrase, he is currently attempting to register to cover a truly vast number of goods and services. One hopes that Sheen lives long enough to use any mark that he registers in all these categories.
Benefits of Registering a Signature Saying as a Trademark
A trademark is a “word, phrase, symbol or design, or a combination thereof” that helps the public identify goods or products, especially to distinguish them from those of competitors. A trademark on a signature saying arises at the time the owner begins using it in commerce. The benefits of a registered trademark, include the following:
- With a valid legal trademark, its owner can sue in federal court for infringement and ask for damages, an injunction to stop the use of the saying or both. In such a suit, the defendant would have to show that the registered trademark doesn't deserve protection—meaning the burden of proof shifts to him or her at the outset and is not on the trademark owner. The test for whether a trademark is being violated is generally the “likelihood of confusion.” A defendant can also prevail if its use of the phrase is determined to be “fair.”
- People throughout the country are put on notice that the trademarked saying has been registered federally, meaning they can't claim they didn't know about the trademark owner's use.
- The trademark owner can stop the importation of infringing materials from outside the US.
Process of Trademarking a Signature Saying
If you're ready to move ahead with attempting to trademark your signature saying, the following describes the basic process:
- Search for conflicting trademarks
Before you apply for trademark protection, you want to make sure your signature saying isn't already trademarked for the same type of goods or services by someone else. You can get a basic idea through a direct search at the Trademark Electronic Search System (TESS) database; however, in most cases, a more thorough trademark search is desirable, which, in addition to a federal trademark search, can include a search of state and business databases, common law, international trademarks and Internet domain names.
- Apply to register your trademark
You can apply to register your trademark through the USPTO's Trademark Electronic Application System (TEAS) to file your application; however, there are limitations to the guidance you can receive from the USPTO staff, and the process is complex and can be confusing. Many people apply to register for a trademark through an online service like LegalZoom that can offer more help. According to their website, they've helped file more trademark applications than the top 25 trademark filing law firms in the country combined.
- Wait for a response
The registration process with the USPTO can take six months from start to finish, and often more—if your examining attorney at the USPTO raises issues that need resolving in the process, for example. Once you file your application and receive your serial number, your examiner will review your application and publish the proposed trademark in the Official Gazette. If anyone objects to your mark, they have 30 days from the publication date to do so.
- Receive trademark approval
You will receive either a Certificate of Registration (if your application was based on actual use in commerce) or a Notice of Allowance (if your application was based on intended use). If your mark is finally refused, you will receive notice of the refusal.
Can All Signature Sayings Be Trademarked?
- Resembles a trademark already registered with the USPTO, so that use would likely cause confusion, mistake or deception;
- Consists of immoral, deceptive or scandalous matter;
- Merely descriptive of goods/services;
- Disparages or falsely suggests a connection with persons living or dead, institutions, beliefs or national symbols;
- A geographic term;
- Merely a surname.
Make no mistake: a signature saying can be extremely valuable, so it's best to learn how you can protect yours with a federally registered trademark before the issue of infringement ever comes up. For more information on applying for a trademark, check out the LegalZoom information center.
“And that's the way it is.” (Thank you, Walter Cronkite.)