Navigating Trademarks: Challenges of Trademarking Commonplace Expressions

Trademarking a commonplace expression is a complex and challenging process. Nonprofits should carefully consider the distinctiveness, genericness, and public policy implications before attempting to trademark commonly used phrases.

Trademarks are powerful tools that nonprofits use to protect their brands, names, logos, and unique identifiers. The primary purpose of trademarks is to prevent confusion and to ensure a nonprofit can build and maintain its brand identity and reputation. However, the question of whether one can trademark a commonplace expression raises interesting legal and practical considerations. In this blog, we will explore the challenges and nuances involved in trademarking expressions that are commonly used in everyday language.

The short answer is yes, a common word, phrase, or expression can be trademarked if the individual or the organization seeking the trademark can clearly demonstrate that the said common word/expression has acquired a unique, secondary meaning apart from the original meaning that is clearly associated with that individual or organization.

In re Lizzo LLC, Serial Nos. 88466264, 88466281, 2023 U.S.P.Q.2d 139 (T.T.A.B. Feb. 2, 2023), the singer Lizzo’s holding company sought registration of the trademark 100% THAT BITCH for clothing. The United States Patent and Trademark Office issued an Office Action refusing registration, alleging that the mark is a “commonplace expression widely used by a variety of sources to convey an ordinary, familiar, well- recognized sentiment.” The applicant argued that the mark was inspired by Lizzo’s song lyrics and filed an appeal with the Trademark Trial and Appeal Board (TTAB). The TTAB noted that much of the evidence referenced Lizzo, her song lyrics, and her music. The TTAB found that most consumers would perceive clothing with 100% THAT BITCH to be associated with Lizzo, rather than a commonplace expression, and therefore reversed the trademark registration refusal.

Commonplace expressions are phrases or words that are widely used in everyday language and may lack distinctiveness. Examples include everyday sayings, idioms, or phrases that are part of the general lexicon. Traditionally, trademarks require a level of uniqueness and distinctiveness to be eligible for protection.

Lack of Distinctiveness: Commonplace expressions often lack the distinctiveness required for trademark protection. Trademarks are meant to distinguish one source of goods or services from another, and common phrases may not meet this criterion.

Genericness: Trademarks cannot be generic, meaning they cannot describe the goods or services they represent. Common expressions, by their nature, may be generic and describe a broader category rather than a specific brand.

Public Policy Concerns: Allowing the trademarking of commonplace expressions raises concerns about limiting free speech and hindering public discourse. Trademarks, while providing protection, should not stifle the use of everyday language.

While trademarking commonplace expressions is challenging, there are exceptions and considerations:

Secondary Meaning: If a common expression has acquired a secondary meaning in the context of certain goods or services, it may be eligible for trademark protection.

Unique Styling or Design: Sometimes, a common expression can be trademarked if it is presented in a unique font, style, or design that adds distinctiveness.

Arbitrary or Fanciful Use: If a commonplace expression is used in a way that is arbitrary or fanciful, it may acquire the necessary level of distinctiveness for trademark protection.

Trademarking a commonplace expression is a complex and challenging process. While some exceptions exist, nonprofits should carefully consider the distinctiveness, genericness, and public policy implications before attempting to trademark commonly used phrases. Consulting with a legal professional experienced in intellectual property law is essential to navigating the intricacies of trademark registration and ensure compliance with relevant legal standards.

Ashley Spear is a nonprofit lawyer with Caritas Law Group, P.C. licensed to practice in Arizona. Ashley advises nonprofit and socially responsible businesses on corporate governance, real property, trademark, and tax-exempt bond financing matters. Ashley also has significant experience advising charter schools and charter networks. To schedule a consultation with Ashley, call 602-456-0071 or email us through our contact form.

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