THEREFORE I WILL FILE A TRADEMARK APPLICATION FOR YOU COVERING 'FORTY SEVEN PERCENT' AND VARIANTS THEREOF.
When is a decorative element of a product trademark use, and when is it descriptive fair use? Does the shirt depicted above signify BORN TO ROCK as the source of origin, or is it just one more trite slogan?
Plaintiff owns an incontestable registration for BORN TO ROCK for guitars, and a recent registration for the same mark for shirts. It received an ornamental objection when filing for the shirt application, which it overcame by showing ownership of the guitar registration and non-ornamental use of the mark on guitars. (See TMEP 1202.03)
Cafe Press sells online items bearing user-created designs, which it affixes to items such as shirts and mugs. Third parties (many third parties) sold shirts with variations of the BORN TO ROCK slogan as part of the ornamentation. Plaintiff protested. Cafe Press declined to stop sales. Plaintiff sued. Cafe Press moved for summary judgment, arguing that its use was descriptive fair use.
Held: Based on a record that appeared to contain only depictions of the designs but apparently not screen shots of Cafe Press’ website (see page 14 of the decision), the Court notes that looking at some of the designs “. . . there is no potential source identifier other than the words that constitute BTR’s mark’ and thus ‘ a reasonable juror could conclude that the use of the phrase “Born to Rock” was intended to identify BTR as the source . . .”
Motion for summary judgment denied.
Now, I couldn’t find any BORN TO ROCK shirts on Cafe Press today. I did go to Zazzle and the webpages for its ‘Born to Rock’ shirts, bear the ZAZZLE mark and identify the brand of the shirt and the vendor of the shirt. Also, the decision noted that Cafe Press asked the court to consider all BORN TO ROCK designs. Some designs did bear other sources (such as WhatAreYouApparel.com) in the design itself.
An upshot – prospective clients call me every so often in an attempt to get exclusive rights to the hot catchphrase of the day. I imagine that people are trying to sew up the rights to FORTY SEVEN PERCENT even as we speak. I then go into my spiel about ornamental use vs trademark use, and how ownership of the trademark wouldn’t prevent true descriptive use of the phrase. And by the time the registration matures, the phrase won’t be that hot anymore.
I think that there may be some case-specific oddities here with regard to the evidence before the court, but others things being equal, the ‘catch-phrase’ registrations was summary-judgement proof this time around.