-Wes Anderson, Attorney
In the media, misstatements and misunderstandings of trademark law are legion. Even the New York Times counts itself among the latest offenders.
The Old Grey Lady’s recent article about presidential candidate and real estate mogul Donald Trump closed with the following:
Records show just one Goldman employee, a financial adviser in the wealth management division, has donated to Mr. Trump — $534.58, to be precise.
That employee’s name is Luke Thorburn. Public records show Mr. Thorburn trademarked the phrase “Make Christianity Great Again” and is selling hats that mirror Mr. Trump’s “Make America Great Again” caps.
Mr. Thorburn declined to comment.
I suspect trademark practitioners cringe right along with me when reading the wording “trademarked the phrase” above. It’s surprising to discover that the Times, purveyor of its own Manual of Style and Usage, has committed the all-too-common gaffe of “verbing” the word trademark.
This blog has already commented on the dangers of “verbing” brand names – and I would humbly suggest that the same warning should apply to the word “trademark” itself – best used as a noun, and not as a verb, and for several reasons:
First, “trademarking” is highly nebulous and often incorrect. To “trademark” something seems to imply that the owner has already secured federal trademark registration rights, but this is frequently not the case. According to the article, Luke Thorburn has “trademarked” the mark MAKE CHRISTIANITY GREAT AGAIN, yet a search of the Patent and Trademark Office reveals that Mr. Thorburn simply filed a trademark application, which the PTO will not examine until at least late April. While the application date becomes the “constructive notice” date for purposes of establishing nationwide rights in the trademark, that only becomes relevant if and when the mark reaches registration, which is not guaranteed. (I suspect an ornamentality refusal is forthcoming, based on the application’s accompanying specimen).
Second, “trademarking” implies that trademark rights exist only to the extent the PTO is involved. To the contrary, many trademark rights exist the moment a mark is first used, though these “common law” or unregistered trademark rights aren’t as expansive as the rights that accompany a federal registration. Mr. Thorburn’s application is based on current use in commerce, with first use on January 22, 2016, so that is the date Mr. Thorburn began accruing “common law” trademark rights, assuming his use does in fact qualify as trademark use.
Third, “trademarking” suggests trademarks are unlimited in scope. Mr. Thorburn hasn’t yet secured any federal rights in his mark; when and if he does obtain a registration, it will only certify his rights as to “Hats,” in Class 25. All federal trademark applications must identify the goods and services for which the trademark is used. This is because trademark rights exist to the extent the mark is used to identify the source of specific products or specific services. No party can claim to own a mark for each and every good or each and every service, leading to the peaceful coexistence of Delta Airlines and Delta Faucets, or Domino’s Pizza and Domino sugar.
It may seem sleeker and cleaner to verb the word “trademark,” but we’ll all be better off if the Times and all other writers return “trademark” to its proper place as a noun (here used in compound with “application”):
That employee’s name is Luke Thorburn. Public records show Mr. Thorburn filed a federal trademark application for the phrase “Make Christianity Great Again” in connection with hats that mirror Mr. Trump’s “Make America Great Again” caps.