Trademarks Commish Deborah Cohn
Q: As we’ve seen recently with the race to trademark Charlie Sheen’s popular sayings (‘Winning! Duh!’), what rights do celebrities have when third parties attempt to trademark their catchphrases and slogans? Can inventors capitalize on a celeb’s phrases?
A: The United States Patent and Trademark Office does not often appear in the “Entertainment” section of the newspaper, but the USPTO sometimes catches a glimpse of Hollywood when celebrities apply to register a catchphrase or slogan.
Catchphrases and slogans can become readily associated with the celebrities who say them, and there are a number of remedies that the celebrities may attempt to rely on to prevent third parties from using or registering these phrases and slogans as trademarks or service marks.
Many states recognize a statutory or common law “right of publicity.” The right of publicity is the right of an individual to control the commercial use of his/her personal characteristics.
In many states, this would include protection for a celebrity’s catchphrases and slogans. One well-publicized example involved Johnny Carson, who successfully prevented a toilet company from using the famous, “Here’s Johnny,” phrase for its product because of the strong association with the former talk show host. See Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831, 218 USPQ 1 (6th Cir. 1983). Most states that do not provide for a “right of publicity” recognize a related “right of privacy” that may cover such claims.
Federal law may also provide some protection for celebrities who wish to stop unauthorized trademark use of their catchphrases and slogans.
If a third party files an application to federally register the catchphrase or slogan as a trademark or service mark, in appropriate circumstances a celebrity may seek to oppose the registration under Section 2(a) of the Trademark Act, 15 U.S.C. §1052(a). The section bars the registration of a designation that falsely suggests a connection with a person.
Legislative history shows that the drafters of Section 2(a) sought to incorporate concepts from the rights of publicity and privacy into the statute. The false association may be established regardless of whether the celebrity has used the catchphrase or slogan as a trademark.
In one example, musician Jimmy Buffett successfully contested a third party’s registration of the term “Margaritaville” in connection with restaurant services because of the close public association of the title of his popular with the performer. See Buffett v. Chi-Chi’s, Inc., 226 USPQ 428 (TTAB 1985).
More detailed information about false suggestion of a connection under §2(a) can be found in Section 1203.03 of the Trademark Manual of Examining Procedure (TMEP) at http://tess2.uspto.gov/tmdb/tmep/1200.htm#_T120303.
Additionally, Section 43(a) of the Trademark Act, 15 U.S.C. §1125(a), provides for a false endorsement claim when a celebrity can show that unauthorized use of a designation is likely to confuse or deceive consumers into believing that the celebrity sponsored or approved of the product.
Moreover, if a celebrity is using the catchphrase or slogan as a trademark or service mark, he or she may be able to file a claim for trademark infringement for use of the slogan on related goods or services. If the mark is determined to be famous, the celebrity might also make a dilution claim.
The major difference between a state’s right of publicity claims and federal claims under the Trademark Act is that Trademark Act claims require a showing of consumer confusion not required under many state laws. However, used together, they provide an effective means for celebrities to protect their intellectual property.
Not a subscriber!? Click here now!
