A. The smell of Play-Doh
B. Harry Potter’s Marauder’s Map password, “I solemnly swear I’m up to no good”
C. The basketball sensation around Jeremy Lin, “Linsanity”
D. Paris Hilton’s catchphrase, “that’s hot”
Before explaining why the password phrase fails, it is probably helpful to have a bit of background on what a trademark is, especially a federally “registered” trademark, which generally refers to a trademark registered with the United States Patent and Trademark Office.
What is a trademark?
A trademark is generally a word, phrase, symbol, or design, that is used in commerce to identify and distinguish the source of the goods; it can also be used to refer to a service, even though technically that is called a service mark. Trademark examples include marks such as logos like McDonald’s golden arches, product names like iPod, fictitious characters like the Geico gecko, and many other marks that identify a brand.
What can be a registered trademark and why bother registering?
That’s a good question. It definitely needs to satisfy the definition set forth above, although there are some complicated situations where even those that satisfy that definition can’t be registered.
While registration is not required, many individuals and companies still choose to do so to protect their Intellectual Property (IP) from competition. Doing so grants them special federal protections against infringement. In other words, the owner of a registered trademark can more easily take legal action against others who used the mark, or something similar to it that would likely confuse consumers.
Now let’s consider what you know about registered trademarks with the four situations above.
Option B: Marauder’s Map
Warner Bros. sought to protect the phrase popularized by Harry Potter that magically activates the Marauders’ Map, which helps snooping wizarding students see the secrets hiding in Hogwarts. Unfortunately, the “informational slogan” was determined to be only “a commonplace term” that only conveys “an ordinary, familiar, well-recognized concept or sentiment,” disqualifying it from trademark registration. In other words, the phrase didn’t actually identify and distinguish the Harry Potter source since it is so common. What does this mean? Basically, anyone, including other companies, can use this same phrase without fear of trademark liability from Warner Bros.
Option A Explanation – Play Doh
The toy company Hasbro successfully registered the scent of Play Doh in 2018, as “a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.” Although this may seem odd, most consumers will probably agree that the smell of Play Doh is quite distinctive. So, other companies that sell modeling compound need to – and in fact do – have different smells.
Option C Explanation – Linsanity
NBA superstar Jeremy Lin successfully registered Linsanity in 2016 even though he wasn’t the first to file. An overzealous fan with no connection to the sport was the first on record with the USPTO for “Linsanity.” However, the clear connection to Jeremy Lin allowed his claim to prevail for use with a variety of items, including bags, cups, clothes, and toys. In other words, registration permits Jeremy Lin himself to profit from Linsanity, rather than some other company.
Option D Explanation – “That’s Hot”
Reality television star Paris Hilton successfully registered her catchphrase, “that’s hot,” from her reality television show, The Simple Life, for use on products such as men’s and women’s clothing. Even though this may seem like a common phrase– the same problem the Marauder’s Map password had– it’s not necessarily common for clothing, so the phrase can identify the goods as part of Paris Hilton’s brand. After Hallmark used this phrase without permission on a greeting card, Hilton sued for trademark infringement which ultimately resulted in a settlement.
What do you think? Comment below?
Loyola University Chicago School of Law, JD 2021