Several years ago, Lebron James filed a trademark application for the phrase Taco Tuesday that, predictably, caused an uproar on the internet. Apart from the fact the internet consistently needs to get outraged over something, it struck many rational people as a bit ridiculous. At some point, most people either have used the phrase Taco Tuesday, have known a dad who says it any time he makes tacos, or have seen the original Lego Movie.[1] Surely, Cleveland dad Lebron James could not trademark
the phrase?
Apparently, the U.S. Patent and Trademark Office agreed with the internet when it denied the application as the phrase Taco Tuesday was too common of a phrase in everyday speech. While all food bloggers breathed a sigh of relief that they would not need to defend themselves for using the phrase on Instagram, it still seemed a bit ridiculous that James would even try to trademark such a common phrase.
He responded to the hullabaloo by explaining he knew this. The purpose of the application had been to confirm that no one could trademark the phrase, so he could join other dads in posting about his family Taco Tuesdays on Instagram. Instead of applying for a trademark to obtain protection for a piece of intellectual property, he did it defensively to avoid issues for future references to Taco Tuesday.
Independent insurance agents may not attract the same scrutiny over what they post on social media as the star of Space Jam: A New Legacy[2] did, but that does not make them immune from the reach of intellectual property laws. Such laws can protect one’s brand, but also can expose an individual to legal consequences (financial penalties and hefty legal fees). The key to navigating what you need to do begins with understanding both the laws behind the main areas of intellectual property law that apply to branding and advertising.
The basics of © and ™
Intellectual property laws were created to do exactly what the term implies: protect the intellectual work of their creators. However—like all basic legal concepts—it quickly becomes much more complicated. For the purposes of branding and advertising, the two areas of intellectual property law that business owners should have a familiarity with are trademark and copyright protections.
Trademark and copyright protections complement each other. Copyright protects the written work (combination of words) of the author while a trademark protects a symbol, which could include words. Author J.K. Rowling has a copyright for each Harry Potter book’s text and certain words and phrases from the books, such as Azkaban and Hogwarts, have been trademarked. These protections mean I cannot simply copy-and-paste Rowling’s book and pass it off as my own in the United States. I can use phrases protected by trademark in this article to explain trademarks, but I cannot start my own Hogwarts School of Witchcraft and Wizardry without obtaining permission from the trademark holder.
Neither of these protections lasts forever. Due to the advocacy efforts of musician-turned-Congressman, Sonny Bono, copyright protections extend for the author’s life plus 70 years if created after Jan. 1, 1978, or 95-120 years from publication if work-for-hire. This allows the author’s estate to continue benefiting from the author’s work while eventually ensuring classic books (the ones everyone recommends, but no one reads) enter the public domain. As a result, anyone can publish a collection of Jane Austen’s work without fear of a lawsuit.
Trademarks have no set duration, at least not to the degree of a copyright. They require the owner of the trademark to continue to use the symbol or phrase. A company cannot simply register a trademark solely to block individuals from using a symbol indefinitely. Companies also must ensure the words or phrases do not become so commonly used that they lose their uniqueness. Google goes to great lengths to ensure its name remains trademarked even if many people use it freely as a verb.[3] Slogans may be trademarked if distinctive, either inherently distinct or proven to have acquired distinctiveness.
® your © or ™
Before naming a business or running any advertising campaign, individuals or companies should check for any phrases or names they wish to use in the Trademark Electronic Search System.[4] Searches should include similar names or symbols. Even commonly used words and phrases should be run through the TESS database as a quick way to reduce the risk of accidentally using someone else’s trademarked name or phrase. If it comes up that the word, phrase, or symbol already has been registered by another entity, then it’s back to the drawing board to think up something new.
The lack of a registered trademark does not automatically mean it can be claimed by slapping a ™ next to the symbol, name or slogan. That must be determined through the application process—from determining a trademark is the best form of protection through proving it is distinct from existing trademarks and not a commonly used phrase, symbol or name. Anybody residing in the United States may apply for a trademark to register their phrase, symbol or name. Once registered with the U.S. Patent and Trademark Office, the branding may be identified as a trademark with an ®.
Copyright registration requires less backend searches to register one’s work, which includes websites. If registering a website, only the original features of the design and text may be included in the copyright registration. Many businesses setting up websites rely on templates or a web designer’s standard HTML programming—neither of which may be included in a copyright application by anyone other than the original writer of the code. Any work included on the trademark registration must be done by the applicant. This means that, if you use a standard template for a website, the template cannot be included in the copyright registration, but the text you write for the various pages does qualify as original.
When to © or ®
Intellectual property law has two overarching objectives: protect creative works and avoid consumer confusion. However, applying for and registering for a trademark may not be necessary to achieve these goals for small businesses. Separate from intellectual property laws, states have their own ways for businesses to register that includes confirming no similar business uses the same name. Insurance departments require agencies and companies to have distinct names to avoid consumer confusion. These registrations are required to operate as a business and receive an agency license in the state. These registrations achieve one of the primary goals of intellectual property law without going through the application process.
Registering trademarks still does offer protection, particularly if your agency has invested in a thorough branding process. Trademark applications can be limited to special character marks, which focuses on the color, font, and/or design of the text and does not extend trademark protections to any use of the word or phrase. A business such as Delta Airlines cannot trademark the word delta, but it can register the specific formatting of the word as designed for advertising. Trademarks also can be registered at any time, allowing a business to turn a once-common phrase or word into an identifier of a product.
Copyright does not have the same alternative to protecting a business name at the state level. For most businesses, websites have emerged as a key marketing tool and way to interact with customers. If your agency creates original content for your website, applying for copyright protection puts other businesses on notice that they cannot reuse your work without permission of the copyright holder. This also extends to images, videos, and recordings your business may create to promote the business.
Registration of a copyright or trademark is necessary to pursue any legal challenges against someone wrongfully using your intellectual property. It’s not necessary to mark work as either © or ™ and claim ownership of the material. Placing a ™ in the upper right-hand corner of a name or mark asserts a trademark currently unregistered. It does not need to be used after every instance of the mark to assert the status of a trademark. To assert copyright of material, the © may be placed somewhere on the website or document with the year of publication and the name of the owner. Many websites now have these three elements at the bottom of every page along the elements appearing in podcast notes and below YouTube videos.
It’s all up to you
All of this is a long way of explaining that individuals and businesses must decide for themselves what steps to take when protecting intellectual property. For many individuals and small, more-local businesses, asserting ownership without registration may be sufficient for protecting their branding and other intellectual property.
In insurance, the licensing process and oversight by insurance departments greatly reduces the risk of other entities using your agency’s name. And, while Lebron James may have claimed to file trademark applications to have a rejection as evidence that he does not own the trademark for Taco Tuesday, most businesses can rely on the information generated by TESS to check their latest promotional slogans do not violate someone else’s trademark rights.
[1] For those who have not seen the brilliant commercial of The Lego Movie, Taco Tuesday is said no less than 10,000 times, and it plays a key part in the plot.
[2] Unlike The Lego Movie, Space Jam: A New Legacy is a corporate branding commercial that does not come out as a compelling movie for the entire family.
[3] NBC News, 2013 (nbcnews.to/3yAAGWA)
[4] U.S. Patent and Trademark Office (bit.ly/3AukNBA)
Clare Irvine, Esq.
Clare Irvine, Esq., graduated from Fordham University School of Law and Arizona State University.
