STACY J GROSSMAN

Trademark Profiteering


by Stacy J Grossman,

 

Trademark Profiteering: Can LET’S ROLL, BOSTON STRONG, I CAN’T BREATHE and JE SUIS CHARLIE be registered as trademarks?

Let’s Roll. Boston Strong. I Can’t Breathe. Je Suis Charlie. Besides being rallying cries for social movements in the wake of horrible tragedies, what do these phrases have in common?

They were all the subjects of multiple trademark applications in the United States: individuals and businesses have tried to register these phrases as brands, and to use them to hawk various goods and services.

We like to think of the United States as the land of opportunity, and especially hospitable to entrepreneurs.  We like to think that anyone with vision and drive can become a successful businessperson.  Sometimes, however, vision and drive can take a distasteful turn, especially when seeming entrepreneurs attempt to capitalize on terror attacks and national tragedies. This article will look at a few of examples of this behavior, and address what, if anything, can be done to curtail it.  

LET’S ROLL

Todd Beamer was a passenger on United Airlines Flight 93 on September 11, 2001. His last words—before overtaking the terrorists who had hijacked his plane and preemptively crashing it into a field in Shanksville, Pennsylvania—were “Let’s Roll.”

The words LET’S ROLL became an emblem of Mr. Beamer, of the bravery of the passengers on Flight 93, and of the tragic events of that horrific day.  America was still reeling from the tragic events when applications to register the trademark LET’S ROLL began flooding into the Trademark Office.

  • The first application, filed for use on t-shirts, was opposed by the Todd M. Beamer Memorial Foundation, Inc., and, after more than three years of proceedings before the TTAB, was finally refused on a technicality.
  • On September 24, 2001, someone filed an application for LET’S ROLL for t-shirts and sweatshirts.
  • On October 5, 2001, someone else filed an application for LET’S ROLL FREEDOM FIGHTERS (and design) for a wide variety of goods and services including key chains, bumper stickers, beer mugs, flags and.
  • On November 30, 2001 yet another party filed an application to register 911 LET’S ROLL (and design) for bumper stickers and clothing. (The same person later filed an application to register 911LET’SSROLL.COM for online retail stores).

All of these applications were later abandoned. 

BOSTON STRONG

On April 15, 2013, two pressure cooker bombs exploded near the finish line of the Boston Marathon, killing three people and injuring an estimated 264 others.  In the hours after the bombings, the slogan “Boston Strong” appeared as a highly popular hashtag on Twitter, and rapidly spread around the world, as an expression of Boston’s unity and strength.

This time it took just two days before opportunists began filing applications to register the rallying cry as a trademark.

  • On April 17, 2013 an application was filed to register BOSTON STRONG for “imprinting messages on T-shirts.” This application was abandoned just 8 days later.
  • That same day, a Massachusetts corporation filed an application to register BOSTON STRONG for clothing and accessories.
  • These were followed by three applications filed by three separate people to register BOSTON STRONG for clothing on April 20, 2013.
  • On April 22, Boston Beer Company, the maker of Samuel Adams, filed an application to register the mark for a marathon beer. 
  • And on May 8, the New England Tea & Coffee Company applied for and eventually registered the mark BOSTON STRONG for coffee and tea.


JE SUIS CHARLIE

A few hours after the attack on the French satirical magazine Charlie Hebdo on January 7, 2015, an artist living just a few blocks away from the magazine’s offices tweeted an image with the words Je Suis Charlie as a way to show sympathy for those killed and to stand up for free speech. Within hours the phrase “Je Suis Charlie” had become a global rallying cry.  And within days, trademark applications were being filed. As of the date of publication of this article, two applications for JE SUIS CHARIE had been filed in the United States, and both are still pending review.  Trademark profiteers are not only an American problem: within a week of the attacks, the French trademark office had received over 120 applications to register JE SUIS CHARLIE as a trademark in France. 

WHAT TO DO?

What can be done about people attempting to profit from tragedies by filing applications to register rallying cries as trademarks?

- The Trademark Office Can Refuse to Register Scandalous Marks

Trademark law prohibits the registration of marks that are scandalous or immoral (see Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a).  This section of the law provides an absolute bar to trademark registration, and has been invoked to refuse registration of trademarks including AW SHIT PIPES for smoking pipes, DICK HEADS! (and design – see SN 74/306,662!) for restaurant services, and MOMSBANGTEENS for a web site featuring adult-oriented subject matter. 

To refuse to register a mark on the ground that it is immoral or scandalous, “the examining attorney must provide evidence that a substantial portion of the general public would consider the mark to be scandalous in the context of contemporary attitudes and the relevant marketplace.”  See TMEP §1203.01.

At first glance it might seem that the scandalous or disparaging marks doctrine could be applied to deny registration to these marks.  But on their face, there is rarely anything scandalous about these marks.  Especially when the Boston-based applicant of BOSTON STRONG for coffee announced its intent to donate some of the proceeds of its sales to a charity to benefit the victims of the marathon bombing.  Moreover, while some trademarks are plainly scandalous, the Trademark Office might be wary of exercising its discretion to find a trademark scandalous when the line is less than clear.

- Parties Can Consider a Defensive Registration Strategy

Another way to counter trademark profiteering is for companies to defensively register trademarks.  This strategy was adopted a few times already, with mixed results.  After the crashes of Malaysia Airlines flights MH17 and MH307, people attempted to register the flight numbers of the lost planes as trademarks.  Malaysia Airlines filed its own applications to combat the third party applications. 

A defensive registration strategy backfired for the ALS Association.  In the middle of last summer’s viral challenge to raise money for the association (a challenge started to support, but not started by, the ALS Association) the organization filed several applications to register ICE BUCKET CHALLENGE as a trademark.  Exactly a week later, the applications were withdrawn, following fierce public criticism.  The non-profit took to Facebook to apologize: 

We’ve received several messages regarding the trademark applications we filed. We filed for these trademarks in good faith as a measure to protect the Ice Bucket Challenge from misuse after consulting with the families who initiated the challenge this summer. However, we understand the public’s concern and are withdrawing the trademark applications. We appreciate the generosity and enthusiasm of everyone who has taken the challenge and donated to ALS charities.

Defensive registrations can backfire, and are surely an unnecessary cost.  In addition, companies should not have to be bothered with considering defensive trademark filing strategies in the wake of tragedies.  Finally, because trademark rights do not arise by virtue of coining a phrase, but instead, by using a mark in commerce in connection with goods and services (or having a bona fide intent to do so), defensive registration is often not practicable. 

 - The Trademark Office Can Refuse to Register Ubiquitous Marks

This brings us to perhaps the strongest defense against trademark profiteering of social movement slogans.  In many of the cases in which people and companies tried to register the phrase BOSTON STRONG as a trademark, the USPTO refused registration because the phrase had become ubiquitous.  In other words, because the phrase was used by so many people, the USPTO found that the phrase could not operate as a source identifier for particular goods or services. Similarly, in France, applications to trademark JE SUIS CHARLIE have been denied because of a lack of distinctiveness, mirroring the concerns shown by the USPTO: how can any one entity claim that people will associate a slogan with its goods or services when the slogan is used by so many other people or entities already?  Of course, with marks like MH17 and MH307, which may not be in such ubiquitous use, this argument loses some of its strength, but it seems that it holds fast in the great majority of cases. 

- The Trademark Office Will Not Register Slogans or Informational Messages as Trademarks

A common error made by trademark profiteers is applying to register a slogan for clothing.  A slogan printed on the front of a t-shirt is considered merely ornamental, and not a true indicator of source.  The Trademark Manual for Examining Procedure provides that “slogans or phrases used on items such as t-shirts and sweatshirts, jewelry, and ceramic plates have been refused registration as ornamentation that purchasers will perceive as conveying a message rather than indicating the source of the goods.”  TMEP §1202.03(f)(i). 

In addition, registration of a trademark may also be refused if the applied-for mark merely conveys an informational, political, religious or similar kind of message.  Such slogans do not function as trademarks that indicate the source of the applicant’s goods.

A number of the trademark applications discussed in this article were refused on these grounds.  So would-be trademark profiteers often waste money on filing fees (and possibly attorneys’ fees), attempting to secure the exclusive right to use a slogan.

IN CONCLUSION…

Trademark profiteering off of rallying cries is a generally a fruitless business.  With few exceptions, these marks are generally not registrable, and the applicants of such marks are viewed with disdain.  Individuals and businesses seeking to profit off of tragedy would be best advised not to spend time and money pursuing trademark applications.  Though those individuals and businesses are probably not the readers of this article.