Trademarks and Common Phrases

Well, decisions have come down from the USPTO and it wasn't pretty. Everybody decided to try and register the phrase "Hot Girl Summer" - the phrase that was coined and made popular by rapper Megan Thee Stallion earlier this summer. It became a huge deal so, of course, she filed an application to trademark it for use on clothing and other items and classes of goods. The world being what it is, she was not the only one who had the bright idea of filing a trademark in order to capitalize on the popularity of the phrase. However, last week the trademark office shut it all the way down because it was, or had become, a common phrase.

The USPTO issued office actions for all of the applications for the phrase that I was able to find in a quick search. Maybe there are more than what I found, but I wasn't about to spend hours searching out of pure curiosity. What I found, however, was that they were all denied and had office actions issued for multiple reasons - all but the original application were denied because of prior pending applications, and all received the same nearly unbeatable denial of a commonly used phrase. Basically, the examining attorney for each application decided that the phrase took on a life of its own from May until the analysis occurred in October and became a commonly used phrase in the modern lexicon. One particular examiner went on to explain how the phrase implies young women enjoying themselves in what may have been the corniest explanation of a popular phrase ever made. While the explanation was corny, the reason behind it matters when it comes to defeating a refusal based upon a common phrase determination.

Normally, you can overcome this decision by showing how the phrase has become distinctive based upon YOUR use of it in the context for which you're attempting to register it. So if, for some reason, a phrase that's been around and that everyone has used somehow comes to be known and associated with the applicant. This doesn't happen often, but it's definitely possible. However, several of the application denials actually specified that the determination could NOT be overcome in the case of "hot girl summer" through an argument of acquired distinctiveness. I have my theories on that, but first let's talk about the other way you can register a commonly used phrase.

There's pretty much one somewhat guaranteed scenario where you can successfully register a commonly used term or phrase - when it's used in a distinctive and unique way that is not associated with its actual meaning or original intent. So, for example, think of the company Apple. Obviously, the word apple is very commonly used and is known by everyone in the English speaking world that it's a fruit. And that's where the point is made here. Because an apple is a type of fruit, using that word in an odd or unique way becomes distinctive and the USPTO loooooooves distinctiveness. So associating the word apple with computers makes it unique since these are two completely different things. Two separate objects, not even remotely associated or similar. And this is one of the only ways that you can succeed on a application that uses a common phrase or word - by using it in a way that is not associated with its original meaning.

So, for example, if Meg's company attempted to register the phrase "hot girl summer" for a car rental company name, she might have had more success. As one examiner explained, the phrase implies or means that young women are engaging in an enjoyable activity meant to be liberating. So trying to use the phrase to imply that (such as on t shirts and sweatshirts, as she intended to do) will result in an automatic denial. But if you try to use the phrase in just about any other context or for just about any other purpose than its original intent, your chances of success instantly rise. Not to 100% because, well, there's only one way to reach 100% success rate and that's to use a term that is entirely and completely unique. Which leads to my last point on why I think some of the examiners took the step of expressing that their determination could not be overcome by showing the mark had acquired distinctiveness.

The USPTO is sick of celebrities.

This is solely my opinion based purely on intuition and feelings. But yeah, I think the USPTO is absolutely, completely, and totally sick of celebrities and their crap. I've only written about a couple of celebrity nonsense trademark applications but it never stops. Kim Kardashian tried to trademark "kimono". Just last week, Kylie Jenner tried to trademark "rise and shine". Beyonce has been in a fight for years trying to trademark "Blue Ivy Carter"...even though someone already owns the trademark for "Blue Ivy". Lebron James tried to trademark "taco Tuesday". In fact, with that last one, the USPTO clearly made a dramatic exception to their rule of taking 90 days to respond to applications and denied Lebron's application in less than 2 weeks after filing. Now, it's not a new trend of people filing frivolous applications. What I believe happens, however, is that when celebrities file these silly applications for things that will NEVER receive registered trademark status, it inspires the public to do the same. When Kylie or Lebron does something like this, the media picks up on it and it spreads like wildfire across social media and the world. People start thinking, "I have a couple hundred bucks. Maybe I should file a trademark for 'milk' to use in advertising....milk."

The problem is that the USPTO is funded by the application fees and responding to them doesn't cost a penny. You can fight it out with your examiner for months and months all for the low, low price of $225 if you want. This means that, in addition to the long turnaround time for applications, they're unable to handle a deluge of stupid applications that show up after regular people hear that celebrities are trademarking their kids' names. The whole purpose of a trademark is to protect someone's distinct and unique mark, or someone's novel use of a word or phrase in a way that is instantly identifiable as them. This is what is supposed to be getting protection - someone coming up with an amazingly unique name (ever heard anyone use the word "kleenex" before the product came out?) and being secure in knowing that nobody can profit off of their creativity in coming up with the cool and unique word.

So no, you can't trademark "kimono" for use in clothing. You can't trademark "hot girl summer" to indicate that girls are having a hot summer. No, you can't take "taco Tuesday". Pay someone to come up with a unique name and then pay to market it, or put in the leg work yourself like real entrepreneurs do.

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