Not An Open and Shut Case

Several trademark applications that have made the news recently have centered on common words or phrases:

• The fashion label Off-White, led by designer Virgil Abloh, tried to register the phrase “PRODUCT BAG,” including the quotation marks around it, with the U.S. Patent and Trademark Office (USPTO). The label has been using the words since 2016 on the clear bags in which it packages some items. In refusing the application, the USPTO said consumers would view the term as descriptive and not as an indication of the source of the product.

• NBA player LeBron James filed a trademark for the phrase Taco Tuesday, for use in entertainment and marketing (e.g., social media). The USPTO denied the application on the grounds that it was already being used, citing not the best-known current user of the phrase, Taco John’s, but a Las Vegas company. The latter had trademarked the phrase Techno Taco Tuesday in the advertising and marketing services category. While the refusal of the application is due to previous ownership, the USPTO also noted that the term was “commonplace,” opening up the possibility, according to reports, that James could respond by establishing Taco Tuesday as a non-protectable term, which would in turn guard him against legal claims revolving around his use of the phrase.

• Ohio State University, well known to viewers of televised NFL football games as The Ohio State University, applied for a trademark on the word The for use on apparel and merchandise. In rejecting the application, part of the USPTO’s argument was that the word The was used for decorative or ornamental purposes and not as a brand. Another issue is that design label Marc Jacobs had previously filed an application for the word The in apparel, which, if accepted, would take priority over Ohio State’s filing, because it was the first submitted (although Ohio State could fight that).

• Air New Zealand submitted a trademark application for a logo that includes the phrase Kia Ora, which is the name of its in-flight magazine, in its home country. The term means hello in the language of New Zealand’s indigenous Maori people. No decision has been made on the application yet, but intellectual property lawyers commenting on the case have said that the phrase is a common greeting among all population groups in New Zealand and widely used in business and government, making an approval unlikely. (The move also attracted criticism for cultural appropriation, separate from trademark concerns.)

These results—explained here in very simplified terms—are not necessarily the last word, as the trademark hopefuls could rework their applications within six months (to add more specificity about how the trademark would be used, for example) and try again. Some have already suggested they would do so.

But these examples serve as a reminder that not all words or phrases can be trademarked. In the U.S., descriptive brand names are not protectable, for example, nor are brand names that do not clearly indicate their source (i.e., they are not recognizable as being associated with a single owner). In other countries, where laws differ from those in the U.S. in certain ways, similar rules exist when it comes to this aspect of trademark protection. Thus none of the attempts described above have passed muster with the relevant trademark authorities, at least to date.

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