What: Describing or Naming My Product
Why Do I Care: When Can I Adopt a Cool, But Previously Used, Phrase to Describe my Product?
What to Do: Hold your horses! If you have come a upon a really cool name, symbol or description for your product, chances may be that the name or description IS really cool. But stop and examine WHY you feel its really cool: THINK - where did you come across your magic phrase before? Do you remember a specific use by some party or person?
Even if you think you came up with your award-winning phrase by yourself - stop. Remember, we all walk around on the sandy bottom of an ocean of media. Concepts, phrases and images common to popular culture pass through us like minerals in sea water.
Think of other phrases or names. Don't fall too much in love with "your" creation yet. Your love for your creation may smother the fires of creativity in which you could forge some alternatives.
Then take a cursory look at the United States Trademark and Patent Office (USPTO) database called "TESS." See if you can find your special phrase listed therein. If you can, you need to consult a trademark or intellectual property attorney in order to perform a proper search to see what can be done to use your phrase or image of choice as you planned.
And if you don't find it there… Well, you still probably need to consult intellectual property counsel anyways - to do a proper trademark search and eventually a filing to protect what your brilliant idea.
The Backstory: Bob Marley is universally recognized as a titan of reggae music and caribbean culture. He released the hit song One Love / People Get Ready. After his death a company called Hope Road, with the help of his heirs, began licensing the use of his likeness, name and phrases from his works.
At some point, Hope Road made a deal with a major resort to use the phrase, "One Love," to develop a Bob Marley themed caribbean restaurant. But Hope Road did not file a trademark registration for the phrase "One Love" with the USPTO for use of the phrase in the area of restaurants. They had made only one registration for Bob Marley images and phraseology. And that registration had to do with its use in producing clothing with images referring to Marley.
Later, a company named Raising Cane started advertising that they had "One Love", too: for their tasty chicken fingers AND they had taken the time to register the phrase "One Love" with the USPTO for use in restaurants!
Who has the right to use the phrase made famous by Bob Marley?
Hope Road, who did not register the phrase for use with restaurants with the US Patent and Trademark Office, but used the phrase in commerce first? Or Raising Cane, who started using the phrase later - but took the time to file a trademark for the phrase in relation to the food service business?
Being the first to use a phrase or image to identify a good or service offered for sale by a business grants that business what are called "common law" trademark rights for exclusive use of that phrase or image relating to that type of product. But those rights are limited to the geographic area and the particular type of goods or services actually offered in that name. The trademark registration process at the USPTO requires parties to publish their proposed trademarks for examination by the business community, so that if someone claims prior rights to the phrase or design, they can object to the issuance of the trademark.
The "One Love" case has yet to be decided as of this writing...
...but what is clear that business owners should regularly catalog and review their marketing materials and expansions of their brand into new areas so that they can register those new uses with the USPTO and claim nationwide rights to those marks in commerce for their products. Yes, it is true that being first to market with a product name or description does grant the innovating business some protection for that name, but the best course is to register a claim for a trade or service mark for each use of your brand name or unique product description.
Observant readers will note that Raising Cane was late to the game but was granted a trademark by the USPTO for using "One Love" in the restaurant biz. The process is not perfect and Bob Marley;'s heirs might have been caught napping. Eternal vigilance is the cost of protecting the symbols and expressions of your business brand.
