- [Attorney] Thanks to CuriosityStream
for keeping LegalEagle in the air.
I don't know about you, but it seems like
every celebrity wants their own trademark these days.
The summer of 2019 was filled with
such celebrity trademark news
as Tom Brady wanting to trademark Tom Terrific
for some reason.
LeBron James filed an application
to register the trademark for Taco Tuesday.
And Lizzo says she's the only one
who can call herself 100% that bitch.
Sure, it's all fun and games until LeBron James
takes away your right to send pictures
of your food with the hashtag Taco Tuesday to your friends.
- [Sports Announcer] Here comes LeBron, he blocks it!
- So, what is going on with celebrities
and the U.S. Patent and Trademark Office, anyway?
(dramatic music)
- Hey, LegalEagles!
Today we are talking about celebrity trademarks.
But first, what is a trademark?
A trademark is a word, symbol, or phrase
that's used to identify a particular manufacturer
or a particular product to distinguish them from
the products of another company or person.
For example, Coke and Pepsi have different logos.
That's how you can be assured that you are grabbing
a delicious Diet Coke rather than
a clearly inferior Diet Pepsi.
Though obviously, we can all agree
that Dr Pepper is by far the best carbonated soda out there.
Now, the federal law that protects trademarks used
in commerce is called the Lanham Act.
The U.S. Patent and Trademark Office
or USPTO for short, is in charge
of granting federal trademark protection.
Trademarks are often confused with copyright,
but they're two very different concepts
and they cover different rights.
Copyright protects original works
of creative authorship fixed in a tangible medium.
That means that authors and artists
have the exclusive rights to do whatever they want
with the things that they make for a limited amount of time.
Whether that's a book, a song, a movie,
a photograph, a sculpture, or anything else
that qualifies for copyright protection.
For example, if you write a novel,
you don't need to register your book or ask
the government to provided a certificate proving
you wrote it.
Once your book is fixed in a tangible medium,
in other words it's written down in some form,
it's protected by copyright law
and no one else can copy your book
or adapt it for the big screen, for instance,
without your permission.
Trademarks on the other hand, are very different.
They don't cover creative expression, per se.
A trademark is not about rewarding
the trademark holder.
The goal of trademark protection is not just
to protect the person or business from
having their trademark stolen,
it's all about preventing consumer confusion.
If you own the rights to a certain trademark,
you can sue someone else from using a trademark
that seems similar to yours to prevent consumers
from being confused.
To prove that someone infringed on your trademark,
you need to show that it's likely
to cause consumer confusion about the source of
the product or service at issue.
Let me give you an example;
Adidas has trademarked it's distinctive three stripe logo
which it places on everything from shoes
to hats to track pants.
Forever 21 sells trendy clothes including sometimes
clothes that seem to have the same three stripe pattern
that you would usually find on Adidas clothes.
Adidas sued for copyright infringement in 2017.
The problem was that the striped sweats
that Forever 21 was selling,
it looked exactly like authentic Adidas clothes.
It looked like something Adidas would actually produce.
The parties eventually settled out of court
but it's very likely that Adidas would
have won that suit.
With a trademark the point is to sure
that consumers know who made the product or service.
When you see the familiar Adidas stripe pattern
on clothes, you know what kinds of products they sell
and the values associated with that particular brand.
You can also trademark phrases and packaging.
Things like short phrases and even single words
that would never be protected by copyright
because they're too short and not creative enough,
that actually might qualify for trademark protection,
again, for the purpose of preventing consumer confusion.
For a mark to qualify for registration
with the trademark office, it needs to be distinctive.
This is based on how well the trademark identifies
the source or manufacturer of a certain product or service.
There are four types of distinctive marks;
fanciful marks are inherently distinctive because
they have no meaning outside
of that which is gained in the context
of selling a good or service.
The word Google for example, doesn't mean anything.
It's just a made-up name that is now associated
with an internet service provider.
The same is true of Kodak, Xerox, or Exxon.
These are the strongest kinds of trademarks
because they don't have any meaning outside
of the trademark itself.
The next strongest form of mark is an arbitrary mark
which is something that already has a common meaning,
but doesn't have a connection to the goods
or services being sold.
Apple is a fruit but it's also a computer.
Lotus is a software but it's also a plant.
These are highly protectable because
they are arbitrary compared to the thing being sold.
Next, there are suggestive marks which refer
to some quality or characteristic of the good.
A jaguar, for example, is a name of a super sleek cat.
But, that's also why the car company chose
that name to associate the characteristics
of the cat with it's cars.
And then finally, we have descriptive trademarks
which simply describe the service or goods.
A descriptive trademark is weak since
it doesn't do anything to identify
the source of the product or service
or, it's pretty hard to create that identification.
If something is merely descriptive,
it will not qualify for registration.
So, for example, if I start a bowl company
named Cereal Bowl, it's unlikely the USPTO
would grant me a trademark.
I can still use Cereal Bowl for my company name
but, I'd have a hard time stopping others
from using it because it's merely a descriptive mark.
But, if I called a new clothing company Cereal Bowl,
that would be an arbitrary mark
and could be very strong because
why would you associate the words cereal bowl
with a clothing company?
It's arbitrary, and it's very likely
to be able to identify Cereal Bowl clothes.
Oh, God, I'm so hungry for some cereal
and some Dr Pepper right now.
In addition to the distinctiveness requirement
for any particular mark,
you also have to use the mark in commerce
before you can get protection from the USPTO.
Trademark has sort of a use it or lose it provision.
Now, in some cases you can declare your intent
to use a mark and get protection
but, that's temporary and still requires use
in commerce in the short-term.
Now, say you have two similar marks.
The question is whether there would be a likelihood
of consumer confusion between the two marks.
On top of that, even if the two marks
are very, very similar,
in fact, sometimes they can be identical
using exactly the same words.
A likelihood of confusion will only be found to exist
where the goods or the underlying services
are in fact connected or related.
What most people get wrong about trademark
is that a trademark only covers a narrow set
of goods or services.
Just because you have a trademark over a specific word
doesn't mean you can monopolize
that word throughout the entire universe.
You only get potential control over similar goods
or services that use a confusing similar mark in commerce.
That's why Wolf Ranges can exist at the same time
as Wolf Clothing.
Or, why Apple Records which was started by the Beatles
could exist at the same time as Apple Computers
which was started by Steve Jobs.
Though, that's probably not a great example
because Apple Records and Apple Computers sued each other
for decades.
Although, maybe it is a good example because
in the 1970s, computers didn't really have anything
to do with music so there was no real overlap
between Apple Records and Apple Computers.
But, as computers became able to make and play music,
overlap was created.
Especially when Apple Computers started making iPods
and the iTunes Music Store.
At that point, it was very possible
that consumers might be confused between the two marks.
For example, if you heard the phrase Apple Music
in 2005, odds are you probably thought of Steve Jobs
rather than Paul McCartney.
And, that's why Apple Records and Apple Computers
were in lawsuits with each other for
the better part of 40 years.
Here's another example,
since I have tennis on the brain since
the US Open is currently on.
Roger Federer is one of the most popular
and famous tennis players of all time.
His name and likeness are powerful for selling goods
and it gives him the ability to get paid big bucks
to endorse products like Rolex, Lindt Chocolates,
UNIQLO, and Nike.
If Roger Federer could not protect his name
and likeness, then maybe I could show up
at the US Open selling special socks
supposedly endorsed by Roger Federer.
And, I'm sure I'd be able to sell a lot of them.
Trademarks are about preventing market confusion.
My Federer socks could hoodwink a lot of people.
And, it's exactly that reason why the USPTO
denied trademark registration
for Rob Kardashian's ex, Blac Chyna
when she tried to take the Kardashian name.
Blac Chyna tried to register the name Angela Kardashian
when she was engaged to Rob Kardashian.
His sisters successfully blocked her attempt
to register that trademark.
The various Kardashian companies
and Kardashian people have powerful brands
that have generated hundreds of millions of dollars.
The USPTO agreed with the Kardashians
that if Blac Chyna started endorsing products
with the name Angela Kardashian,
the product would inevitably be considered part of
the Kardashian brand.
In particular, that's called trademark dilution
because you are diluting the power of
that particular mark.
And, in that particular instance,
that's probably considered trademark passing-off
where you're trying to pass off your goods
as being affiliated with somebody else.
And, both of those are no-nos as far
as trademark law goes.
But, it was easy to see why Blac Chyna
was eager to capitalize on that name
and it was also easy to see why the
Kardashians wanted to stop her.
So, let's talk about some of these
celebrity trademark names that are in the news today.
As the would be Angela Kardashian recognized,
registering a name has become increasingly popular.
However, to really enjoy the protection
of trademark law, you have to promise
to use that name in commerce.
If you use the name you're trademark will disappear.
You'll abandon that trademark.
Many celebrities have been criticized
for trying to trademark their kid's names.
They usually say that they have no intention
of ever making money on the name of their child,
they just want to stop other people
from capitalizing on their children's name.
But, this legal tactic doesn't really work.
Since trademarks are given specifically
for use in commerce.
You have to use them to get a trademark.
And, even then they would only apply
to similar goods.
Are children goods?
No, no, they are not.
So, it didn't go well for Beyoncé and Jay-Z
when they tried to register the mark
for their daughter Blue Ivy.
A Boston company called Blue Ivy Elements beat them
to the punch demonstrating that they had used
the mark Blue Ivy since at least 2009.
And, four years later, the Carters tried again
this time trying to register Blue Ivy Carter.
But, they insisted the reason that they needed
the trademark was to stop others from using it.
Once again, Blue Ivy Events contested the filing
and they accused the Carters of trademark fraud
since they claim to have no intention of actually using
the name for goods or services.
And, once again, the Carters were defeated
because you can't just try to monopolize a particular name.
Which brings us to whether Tom Brady can trademark
the term Tom Terrific.
Nicknames actually can be eligible for trademark.
That was clearly what Tom Brady thought when he tried
to file the trademark registration for
the nickname Tom Terrific.
When Brady's registration attempt became public,
he backpedaled claiming that he just want to stop people
from associating the name with him
because he thought it was stupid.
- I was actually trying to do something
'cause I didn't like the nickname and I want
to make sure no one used it 'cause some people wanted
to use it.
- What?
That makes absolutely no legal sense.
When you file a trademark you have to show
that it is closely associated with
the thing you intend to use it for in the marketplace.
Not that you are hoping
that people will never call you Tom Terrific
and that you want the trademark specifically
to stop people from using it
and, that you yourself will never use
it because you hate that particular nickname.
I would love to hear the communications between Brady
and his lawyer. Did he just call him up and say,
"Hey, some guy on ESPN saw my comeback last week
and is now calling me Tom Terrific."
"Send that guy a cease and desist letter!"
Not surprisingly, we already know what the USPTO thinks
of this particular Brady trademark registration
because it has already denied the application.
The USPTO not only noticed that Brady had no intent
to really use it in commerce, but also the nickname
includes a matter which may falsely suggest a connection
to Tom Seaver.
Tom Seaver for those of you who are younger
than the age of 70 is a former Major League Baseball pitcher
who started for the 1969 Mets.
He was so good that the media gave him
the nicknames Tom Terrific and The Franchise.
Because of that, the USPTO held that quote,
"The mark Tom Terrific points uniquely and unmistakably
to Tom Seaver and the fame or reputation
of Tom Seaver as 'Tom Terrific' is such
that a connection between Mr. Seaver
and the applied-for goods would be presumed."
Again, the USPTO is telling us
that consumer confusion is key.
Products featuring the nickname
could make you think Seaver endorsed or approved them.
And, the USPTO also thought that is was significant
that Seaver is alive and didn't consent
to the Brady trademark registration.
This is the kind of misuse of the legal system
that really grinds my gears.
Brady's attempt to grab the trademark
was an attempt to control speech.
He just wanted to not call him Tom Terrific.
But frankly, I don't think we can let this stand.
Even though Brady is on my Fantasy Football team,
let's start a movement to start calling
him Tom Terrific Brady, hastag TomTerrificBrady.
Which brings us to famous catchphrases like Taco Tuesday.
It is possible to trademark certain catchphrases.
But, only for the protection of it's use
in connection with goods or services.
Just saying a catchphrase doesn't make it
something that you can register.
But, you can use the catchphrase in connection
with goods and services.
You can also stop someone else from profiting
from your catchphrase in a similar industry.
When it comes to registering catchphrases,
Taylor Swift is a frequent filer.
She has filed trademarks applications
for the names of her albums like Reputation.
Lyrics from her songs like, "The old Taylor can't come
to the phone right now," and even
the name of her world tours like the 1989 World Tour.
But, Swift doesn't always win registration
for her trademarks.
That's because in order to get them you need
to prove that it's more than just a thing
that she said one time.
Which brings us to LeBron.
Can LeBron James register Taco Tuesday?
One of LeBron's companies filed a trademark application
on August 15th stating that he intended
to use the term Taco Tuesday in his business ventures.
LeBron has had a fun summer Instagramming
his family's enjoyment of weekly taco meals.
- It's Tuesday somewhere, so you know what that means?
It's Taco Tuesss-daaay!
- So much fun that his company says he intends
to start an empire of products
and podcast using the phrase.
But, LeBron's quest maybe is doomed to failure
as his first season as a Laker.
That's right.
I said it.
A Wyoming restaurant called Taco Johns' got
the Taco Tuesday trademark way back in 1982.
Taco John's is a small western franchise
but it has defended it's trademark with some success.
However, the trademark is considered relatively weak since
it's merely descriptive.
It isn't fanciful or original, it's a phrase
that many people have used for decades
to describe the fact that they're eating tacos
on Tuesdays.
And, it's not necessarily something that you hear
and immediately think,
"I should go to Taco John's right now."
That's probably why restaurants everywhere
have used Taco Tuesdays in promotions.
So, LeBron is starting with two strikes.
One, is that another company already uses
the trademark Taco Tuesday,
and two, the trademark is descriptive of something
that people do.
They eat a bunch of tacos on Tuesday.
It isn't truly associated with LeBron or his products
in any particular way.
As a result, the USPTO is likely
to deny LeBron's trademark the same way
that they denied Brady.
So, finally that takes us to Lizzo.
Lizzo is taking the world by storm in 2019,
so the singer decided to take things
to the next level by applying for
the trademark 100% that bitch
from her song Truth Hurts.
♪ I just took a DNA test, turns out I'm 100% that bitch. ♪
Lizzo says she intends to use the phrase on clothing
and entertainment services.
Some people have called out Lizzo because she
didn't invent the phrase.
As far as anyone knows the first person
to gain traction with that phrase on the internet
was singer Mina Lioness who tweeted back in 2017 quote,
"I did a DNA test and I found out I'm 100% that bitch."
Which, I probably don't need to tell you, is hilarious.
Mina's tweet became a viral moment
and an incredibly popular meme.
So, yes it's true that Lizzo didn't invent
the phrase but does that prevent her
from filing a trademark?
Not really.
This isn't a copyright claim where originality
and creativity are incredibly important.
And, where you can use that kind of protection
to stop another person from stealing their work.
That phrase is probably so short
that it wouldn't receive copyright protection.
So, the verdict?
Well, in trademark law we're most interested
in whether a person has claimed a mark
as their own by using it in commerce.
Mina had a viral moment but didn't do anything
with it as far as goods or services go.
She didn't start a company with that name,
she didn't slap it on some T-shirts,
or even use it in the title of her next album.
So, that probably means it's fair game for Lizzo,
provided that she actually uses it
for a bonafide reason in goods or services
that she provides.
Now, Tom Terrific Brady is great, isn't he?
Or, if you don't live in Boston
maybe you just think he's 100% that bitch.
Either way, he's not the perfect athlete.
If creating the perfect athlete is something
that you're interested in,
there is a fascinating documentary
on CuriosityStream called The Quest for the Perfect Athlete.
It's about how Psycho-Cognitive training
is carried out in certain professional teams
to push athletes even further to win world records
and Super Bowls, and World Series.
So someday, Tom will be even more terrific.
It is a great watch and one of thousands
of documentaries you can watch on CuriosityStream.
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Again, that's CuriosityStream.com/LegalEagle.
So, click on link in the doobly-doo
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But, what do you guys think?
Do you think that celebrities are out of line by trying
to trademark these phrases and names?
Or, do you think it is a perfectly reasonable way
to protect against consumer confusion?
Leave your objections in the comments
and check out this playlist over here
where I have all of my other real law reviews
where we talk about all of the pressing legal issues
of the day.
So, click on the playlist and I'll see you in court.