The Donald's New Game of Trademark Monopoly:
By IRWIN R. KRAMER
|Monday, Mar. 29, 2004|
Donald Trump is taking names.
According to the U.S. Patent and Trademark Office, he and his companies have taken or laid claim to hundreds of them, each more opulent than the last: The Trump Tower, The Trump Castle, The Trump Taj Mahal.
At one time, you could fly to these places aboard The Trump Shuttle while drinking a cold bottle of Trump Ice water or downing a six-pack of Trump's Golden Lager. And, what goes better with a fine brew than a tantalizing appetizer of Oysters Trump?
While The Donald ultimately abandoned his trademark on the shellfish, his latest pursuits focus on the selfish. Each week, he fires losing entrepreneurs in their quest for fame and fortune on "The Apprentice." Now, the star of this hit reality show faces competition of his own in the entrepreneurial quest to monopolize his most powerful catchphrase: "You're Fired!"
Will he prevail in trademarking a phrase that only the nastiest of bosses dare to utter? Possibly - but in legal reality, The Donald will never fully "own" these terms of termination.
The Game of Trademark Monopoly: Preventing Consumer Confusion
Trump may have won the game of Monopoly using Manhattan and Atlantic City as his game boards. But, unlike skyscrapers and casinos, one can never fully monopolize short slogans and other words in the dictionary.
Copyright law lets authors monopolize short writings, but rarely phrases of only two or three words. And for good reason: If copyrights covered such terse expressions, the rich and famous could monopolize the dictionary, making everyday utterances grounds for legal action. So, when your boss wants to get something done, he can send memos telling you to "Just Do It," without fearing a lawsuit from Nike Corporation.
The problem comes in when the boss sells a competing brand of sneakers with ads that urge buyers to "Just Do It." Though this phrase is too short to merit copyright protection, trademark law comes to the rescue, preventing the use of Nike's slogan to confuse consumers as to the maker of these shoes.
Unlike copyrights, trademarks don't give their owners unlimited rights to use phrases for all purposes. Indeed, trademarks were only designed to protect a merchant's efforts to distinguish his brands from those of his rivals. As the law seeks to stop competitors from tricking consumers as to the source of goods, trademark rights only extend to phrases when used in marketing or advertising.
Unless a phrase is used to fool consumers, anyone is free to use it regardless of how unique it may be. Thus, even if Trump proves that "You're Fired" is distinctive enough for a trademark, he will only win the exclusive right to market the phrase. Since he can't get a monopoly on non-competitive uses, nasty bosses may continue to "fire" away without writing royalty checks to the man who "popularized" the expression.
Secondary Meaning: Has The Donald Truly Made His Mark With the Phrase "You're Fired"?
Trump has certainly made his mark on the Manhattan skyline. But trademark examiners must determine whether he has left a sufficient imprint in the phrase "You're Fired" to qualify for trademark protection.
What's the legal test? To get his trademark, The Donald must establish that the slogan carries a "secondary meaning" which identifies America's most flamboyant entrepreneur. Put another way, Trump must show that Americans link this phrase directly to him - so closely that this connection has actually become part of its meaning.
When words only convey their "common meaning," they are deemed "generic" and unsuitable as trademarks. But, as one federal appeals court found, the odds of registering trademarks in everyday expressions may be "strengthened by the entrepreneur's use." Even if they don't identify the entrepreneur directly, they may still become trademarks "through operation of the consumer's imagination."
In Trump's climb to the top of the Nielsen ratings, this entrepreneur has captured the consumer's imagination and may have captured a trademark. Giving new meaning to words that once traumatized ousted employees, The Donald is putting the fun back into firing. When Trump tells you "You're Fired," you don't lose a job, but a game - and your consolation prize is the national exposure that you've already received.
This didn't console contestants like Sam or Omorosa. But, with nearly 20 million viewers happily tuning in to Trump's weekly terminations, and many yelling "You're Fired" at the mere sight of this media maven, the man and his fiery message are indelibly linked in the public mind.
For this reason, Trump will likely win his coveted trademark. But just in case courts find the phrase too "common" and "generic" to merit protection, the casino mogul has wisely hedged his bets by filing for two additional trademarks which identify him directly: "You're Fired! Donald J. Trump" and "You're Fired! The Donald." His odds of winning these distinctive phrases are virtually assured.
Facing the Competition: Has Trump Been Trumped?
Like the candidates on his show, The Donald faces competition of his own. Three other entrepreneurs have filed trademark applications for the exclusive right to exclaim "You're Fired" on such novelties as coffee mugs, baseball caps, mouse pads, footwear and, yes, bulletproof vests.
But Trump's toughest competition may be a little-known Michigan entrepreneur who never applied for a federal trademark. As the owner of You're Fired, Inc., Sallyjo Levine's small ceramics studio boasts sales all over the country and features an online store where visitors can buy "You're Fired" coffee mugs, T-shirts, boxer shorts, baseball caps and tote bags.
How could Sallyjo possibly beat The Donald? In short, it is because her company has marketed the phrase for years. This means that, even without federal trademark registration, Sallyjo has the exclusive right to use this "common law trademark."
Ordinarily, that right would be limited to her own state. But Sallyjo's presence on the World Wide Web arguably provides her with nationwide rights that could trump Trump's.
Sallyjo doesn't have a fancy boardroom. But, if Trump doesn't mind the smell of unglazed pottery and paint, he might just want to come to her negotiating table before he can fully exploit his trademark phrase.