Monday, 18 February 2008

How to Register a Trademark & Copyright for a Catchphrase.

1ese1 A catchphrase is an expression usually popularized by continued use by individuals and consumers.  People love a good catchphrase.  But many clients wonder how to protect a good catchphrase once it catches on. We are often asked by clients "can i copyright a catchphrase" or "can I trademark a catchphrase."

A catch phrase, like a word or design, can be registered as a trademark and entitled to the same protection and rights as a brand name or other mark.  Although catchphrases are most often made popular by oral repetition which lends itself to trademark protection, a catchphrase can also be registered as a copyright if its rendition on paper, the internet or digitally incorporates a unique or artistic design. Trademarking a catchphrase is always a good idea if it denotes the source and origin of goods or services (see trademarked catchphrase list below).  Protected correctly, a catchphrase can become yet another valuable piece of your intellectual property assets

"Traverse Legal's attorneys know how to trademark a catchphrase and, for artistic renderings, how to copyright a catchphrase. Our trademark and copyright attorneys pride themselves on advanced trademark and copyright registration techniques which are both cost-effective and budget oriented."

We have compiled a list of some of the most famous catchphrases below.  If you are wondering if your catchphrase stands up to some famous ones, take a look at this list.  (list of some well-known and extremely valuable catch phrases, protected as an intellectual property right, as reported on by Caroline Donnelly here).

"Three-peat"

In 1988, Pat Riley and his Los Angeles Lakers were headed for a third consecutive NBA championship. The team started to use the term "three-peat" to describe their ultimate goal. Coach Riley claims the term originated from player Byron Scott. During the season, Riley registered the phrase as a trademark for use on merchandise. The Lakers' third championship attempt was thwarted by the Pistons in 1989, but the Chicago Bulls accomplished the feat in 1993. Riley was able to slam-dunk all the way to the bank when the Bulls opted to use the phrase for championship merchandise.

In 2005, a group of USC students were anticipating a third consecutive BCS championship and attempted to trademark the phrase "Three-Pete." The misspelling was created not only to avoid paying Riley for use of the phrase, but also to pay homage to coach Pete Carroll. The federal trademark board ruled that the spelling difference was not enough to differentiate it from Riley's three-peat. When a student started to sell his own "Three-Pete" shirts he was served with copyright infringement notification. And, just like Riley, USC did not succeed in reaching a three-peat.

"Let's Get Ready to Rumble!"

Michael Buffer, the boxing and wrestling announcer well-known for his booming voice and classic catchphrase, holds the trademark to this phrase, which he started using in the 1980s. By 1992 he had a federally registered trademark for it. The move turned out to be profitable, as Buffer has used the phrase for songs, video games, and lottery commercials.

Always the entrepreneur, Buffer licensed the phrase to New York City taxicabs in the late 1990s for use in a welcome message, voiced by Buffer himself, encouraging riders to buckle their seatbelt before exclaiming "Let's get ready to rumble.... for SAFETY!"

Buffer even appeared in a commercial for Kraft cheese and oh-so-cleverly changed the phrase to "Let’s get ready to crumble!" for the company's pre-packaged cheese crumbles. Surprisingly, Buffer has spared incarnations of the phrase involving many rhyming words. Look out fumble, bumble, stumble, humble, et. al.

"Let's Roll"

There have been at least 17 approved applications to trademark the phrase "Let's roll" since September 11, 2001.

Heroic Choices, the charitable organization formerly known as the Todd M. Beamer Foundation, trademarked the phrase in order to sell merchandise with proceeds going to the charity. But 16 additional claims were granted to other companies, for use on other types of merchandise including rolling back packs, roller sports, soft pretzels, paint rollers, metal building materials and tapes. Even Rolling Rock beer offers you to "Let's roll... and rock with Rolling Rock."

An applicant using the name "Let's Roll Freedom Fighters" trademarked the phrase for use on just about anything you can buy in a gift shop; mouse pads, lighters, key chains and gun cases.

"That's Hot"

Heiress Paris Hilton popularized her catchphrase "that's hot" on her hit reality show The Simple Life. She was the subject of media scrutiny when she applied for a trademark for the simple and relatively common phrase. She was granted three trademarks in 2007: one for use in men and women's clothing, another for electronic devices and a third for alcoholic beverages. She has used the phrase to promote a canned version of an Italian sparkling wine called Rich Prosecco.

Later in 2007, Hilton announced plans to sue Hallmark for using her image and trademarked phrase on a greeting card. Hallmark claims that the card is fair game because it is parody; Hilton feels her rights have been violated. Currently, it is unclear if the case will go to court.

"Bam!"

Emeril Lagasse's "Emeril's Food of Love" company owns the right to the phrase "Bam!" for its use on just about anything you can find in a drawer or cabinet in your kitchen: pans, pots, spatulas and tongs. There are numerous other claims to the phrase, including one by Jackass star Bam Margera and one by the EasyOff company for their cleaning products of the same name, but only Emeril's uses an exclamation point.

"Goodnight my sweet Anna baby"

Larry Birkhead, the father of the late Anna Nicole Smith's daughter Dannielynn, trademarked this phrase for its use in movies, books, television programs and stage plays. The phrase was used heavily by the media during coverage of Smith's death. Birkhead claims the phrase is what the late Smith wanted to hear every night before she went to sleep, and Birkhead included the line in a poem on his Web site following her passing.

This list illustrates how some forethought can become profit down the road.  Contact a trademark attorney today regarding your catchphrase.  Remember, while an intent to use application can be filed with the USPTO, in order to have a valid trademark, registrable with the USPTO, one must not only have a distinctive mark but also has to exhibit actual use of the mark in commerce.  A trademark lawyer can help you get to the point where you have trademarked your catchphrase and are now able to profit from it.

COMMENTS

Catchphrases are tough to register as a trademark. Do they really reflect source and origin? If so, you can trademark a catchphrase. If not, achieving trademark registration could be difficult. It is best to trust a trademark attorney so that you know how to build your catchphrase into trade mark worthy phrase.

But you have to use the catch phrase as a brand in order to get trademark rights. It must distinguish your goods and services from others in the market place.

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  • Types of U.S. Trademarks - USPTO Stopfakes.gov
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