Patent Attorney and Founder
JD: Hi everyone, it’s me again. I just did a search on my slogan, which I want to use for my company’s clothing and merchandise, and I realized it’s used in a very popular TV show. The slogan is two lines, very basic, like “It’s incredible and it’s life.” I know scripts are copyrighted, not trademarked, but since I’m using mine for clothing and merchandise, I think we would be fine. Thoughts?
Matt: I would say no, because if this is an expression used from a TV show, the USPTO may deem it to be a commonly used expression. If it’s popular in general culture, memes, and pop culture, then it might be considered a common expression, making it ineligible for trademark registration.
Matt: Second, for an expression like this to function as a trademark, it needs to connect your product to a consumer. That’s the whole point of a trademark.
JD: For example, consider the phrase “That’s the last straw.” If you’re trying to build a brand around that,
Matt: You need to research if the USPTO has deemed it a common expression, making it off the table for registration.
Matt: Assuming the expression can be registered, you’d need to check its availability in the apparel class. A common refusal is that the expression is a common phrase, and it’s easier to find such phrases on social media these days. With a population of 330 million, the examiner could easily find 100 other people using the same phrase on various goods and services.
Matt: Additionally, the USPTO might associate the phrase so strongly with the TV show that they could question your ownership of it. Finally, consider whether the phrase functions as a trademark or if it’s just decoration or ornamentation. Consulting a trademark attorney before investing in printing thousands of t-shirts is highly advisable.
Matt: Apparel is tricky. Many clients want to file in the apparel class (Class 25), but it’s more complicated than they think. There are numerous applications in Class 25, and proving use isn’t as simple as putting the expression on the front of a t-shirt. It needs to be in specific locations like the upper left breast pocket area or on the label. Registering a trademark in the apparel class is more challenging than most clients realize.