Can You Trademark a Quote?

Trademarks play a crucial role in brand identity, helping businesses distinguish their products and services from others in the market. While many people are familiar with the concept of trademarking brand names or logos, fewer understand whether a quote can be trademarked. This article will explore the nuances of trademarking a quote and how you can protect a unique phrase through the United States Patent and Trademark Office (USPTO).  

Verna Law, P.C. focuses on trademark law.  If you have any questions about your trademark, please send us an e-mail to anthony@vernalaw.com or call us at 914-908-6757.

What is a Trademark?

A trademark is a form of intellectual property that provides legal protection for symbols, words, or phrases that distinguish the goods or services of one entity from those of others. Trademarks can encompass a variety of elements, including logos, brand names, slogans, and even certain quotes or phrases. By securing a trademark, the trademark owner gains exclusive rights to use that mark in connection with specific goods or services, preventing others from using it without permission.  Trademarks that are federally registered have a different set of rights than common law trademarks.  

A trademark is “a symbol or a device to distinguish the goods or property made or sold by the person whose mark it is, to the exclusion of use by all other persons.” Trade-Mark Cases, 100 U.S. 82, 92, 25 L.Ed. 550 (1879); see also § 1127. As we have explained, “[t]he principle underlying trademark protection is that distinctive marks—words, names, symbols, and the like—can help distinguish a particular artisan’s  *291 goods from those of others.” B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138, 142, 135 S.Ct. 1293, 191 L.Ed.2d 222 (2015). So “[o]ne who first uses a distinct mark in commerce thus acquires rights to that mark,” which “include preventing others from using the mark.” Ibid.

Can a Quote Be Trademarked?

Yes, a quote can be trademarked, but it must meet specific criteria. Not every quote is eligible for trademark protection; it must be distinctive, associated with a particular product or service, and capable of functioning as a source identifier in commerce.

For example, the USPTO dened LeBron James’ company, LBJ Trademarks LLC, application of TACO TUESDAY for registration as a trademark.  That was because it failed to function as a trademark.  

From the refusal to register at the USPTO: “Registration is refused because the applied-for mark is a slogan or term that does not function as a trademark or service mark to indicate the source of applicant’s goods and/or services and to identify and distinguish them from others.  Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-1053, 1127.  In this case, the applied-for mark is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.  See In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (holding DRIVE SAFELY not registrable for automobiles and automobile parts because the mark would be perceived merely as an “everyday, commonplace safety admonition”); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715-16 (TTAB 1987) (holding PROUDLY MADE IN USA not registrable for electric shavers because the mark would be perceived merely as a common message encouraging the purchase of domestic-made products); TMEP §1202.04(b).  

Terms and expressions that merely convey an informational message are not registrable.  In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010).  Determining whether the term or expression functions as a trademark or service mark depends on how it would be perceived by the relevant public.  In re Eagle Crest, Inc., 96 USPQ2d at 1229; In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1862 (TTAB 2006); TMEP §1202.04.  “The more commonly a [term or expression] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”  In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b).”

A quote can be a trademark – it just has to function as a trademark.

Distinctiveness and Secondary Meaning

For a quote to be eligible for trademark protection, it needs to be distinctive. A quote that is too generic or commonly used may not qualify. In some cases, a quote may acquire a secondary meaning, which occurs when the public associates the quote with a particular source, rather than just the words themselves. For example, a famous catchphrase used by a brand in its marketing efforts over time may develop a secondary meaning, making it eligible for trademark protection.

The Application Process

To trademark a quote, the trademark owner must file a trademark application with the USPTO. This process includes several essential steps:

1. Trademark Search: Before filing, it’s important to conduct a comprehensive trademark search to ensure the quote isn’t already registered or in use by another entity. This can be done using the USPTO’s Trademark Electronic Search System (TESS) on the USPTO website or with the help of a trademark lawyer.

2. Filing the Application: The application must include details about the quote, the specific goods or services it will represent, and the class of goods under which it will be registered. The USPTO classifies trademarks into various categories, known as trademark classes, based on the nature of the goods or services.

3. Specimen of Use: The applicant must provide a specimen of use, demonstrating that the quote is used in commerce in connection with the specified goods or services. This is an important step to show that the quote is not just a catchy phrase but a brand identifier.

4. Examination by the USPTO: Once the application is submitted along with the required filing fee, an examining attorney at the USPTO will review it to ensure the quote meets all legal requirements. If the application is approved, it will be published in the USPTO’s Official Gazette for opposition.

5. Statement of Use and Maintenance: After receiving a Notice of Allowance, the applicant must file a Statement of Use, showing continuous use of the quote in commerce. Maintenance documents must also be submitted periodically to keep the trademark active.

Challenges and Considerations

Trademarking a quote can be challenging, especially if the quote is a common phrase or has been widely used in a non-commercial context. The USPTO is likely to scrutinize whether the quote is distinctive enough and whether it serves as a brand identifier rather than just a statement.

Additionally, the geographical area where the quote is used and the specific goods or services associated with it play a role in determining the scope of protection. For example, a trademarked phrase might have exclusive use within a particular industry but not across all sectors.

Common Law Rights vs. Federal Registration

It’s important to note that while federal registration with the USPTO offers nationwide protection, common law trademark rights may still exist for unregistered quotes that are used in commerce. However, common law rights are limited to the geographic area where the quote is used and may not provide the same level of protection as a federally registered trademark.

To enforce common law trademarks, a higher standard must be met in court than a federal trademark registration.  

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), provides a right of action for unregistered trademark infringement. To survive a motion to dismiss, a plaintiff must plausibly allege that the defendant (1) used a designation or false designation of origin; (2) in interstate commerce; (3) in connection with goods or services; (4) when the designation was likely to cause confusion mistake, or deception as to the affiliation, connection, or association of the defendant with another person or the origin, sponsorship, or approval of the defendant’s goods, services, or commercial activities by another person; and (5) that the plaintiff has been or is likely to be damaged by those acts. 4 McCarthy on Trademarks and Unfair Competition § 27:13 (5th ed.).

New York common law, like the Lanham Act, provides a cause of action for trademark infringement. “It is well-established that the elements necessary to prevail on causes of action for trademark infringement and unfair competition under New York common law mirror the Lanham Act claims.” Gym Door Repairs, Inc. v. Young Equip. Sales, Inc., 331 F. Supp. 3d 221, 250 (S.D.N.Y. 2018) (quoting Lorillard Tobacco Co. v. Jamelis Grocery, Inc., 378 F. Supp. 2d 448, 456 (S.D.N.Y. 2005)). But common law unfair competition requires, beyond the Lanham Act claim, “an additional showing of bad faith,” such that “plaintiffs must combine

Legal Advice and Trademark Searches

Given the complexities involved in trademarking a quote, it’s advisable to seek legal advice from a trademark attorney who can guide you through the application process, conduct thorough trademark searches, and address any office actions from the USPTO. This is particularly important for small businesses and brand owners who want to ensure their intellectual property is fully protected.

Conclusion

Trademarking a quote is possible, but it requires careful consideration of the quote’s distinctiveness, the specific goods or services it represents, and the application process with the USPTO. By taking the necessary steps, including conducting a trademark search and providing a specimen of use, you can secure legal protection for your unique phrase and ensure it becomes a valuable asset to your brand. Whether you’re a business owner looking to trademark a memorable phrase or a law firm guiding clients through the process, understanding the nuances of quote trademarks is the first step toward achieving strong brand recognition and legal rights.

• Can You Trademark a Word?
• Can You Trademark a Hashtag?
• Can I Trademark My Name?
• How to Prove Trademark Infringement

Verna Law, P.C. focuses on trademark law.  If you have any questions about your trademark, please send us an e-mail to anthony@vernalaw.com or call us at 914-908-6757.