Trademark lawyers Bill Finkelstein and Cheryl Hodgson discuss the phenomenon of trying to register ubiquitous terms.
When a number of people jump on the band wagon and file to register a trademark, is the first to file the winner? “Keep Calm and Carry On” is a great example.
Cheryl Hodgson: We were talking about one other one, which I really love this example. It goes back in history to World War II with Winston Churchill.
Bill Finkelstein: Exactly. Apparently, back in the days when England was really in fear of being invaded by Nazi Germany, I remember visiting the war museum in London. They had posters there of what to do if the Nazis invade. Another poster was a notice to farmers, “Kill all your cows,” when the invasion happens so that the Nazi army could not feed itself.
I'm not sure how the populace was supposed to eat but somewhere along the line, this was a real, real time of fear. There were other posters, morale building posters out there. One of them was this one, that I brought with me, I don't know if we can see it here.
It's become very ubiquitous now, “Keep Calm and Carry On.” It even sounds very British, “Carry on.” There was a whole series of carry on movies years ago. I don’t know if you remember that, your grandparents probably.
Cheryl: I actually think I could use a copy of that from day-to-day.
Bill: The long story short, a bookstore owner in the UK found a bunch of these posters in a storeroom somewhere. He dealt in old books. Maybe he picked them up at an estate sale or whatnot. He put them out. He maybe found 20 of them.
They started selling like crazy. He decided this could be a nice little side business. He went to the Kinkos of the UK and replicated them, and started selling posters, and had a nice little business selling posters. Then it started to catch on.
Another enterprising entrepreneur, UK entrepreneur, so capitalism isn't confined to the United States, went out and decided to go into an entire licensing business, and filed trademark application in the European community which covers the UK and the United States and other countries, for a whole wide variety of the classes we just talked about, all the classic mugs, trinkets, jewelry, posters, stationary, stickers, you name it.
Indeed, you can see them all over now. The question is, was he going to go after this poor little bookseller who started the whole thing? He indicated he was not even though he had filed first. The bookseller never even thought about filing for trademark.
Cheryl: Too bad.
Bill: Exactly. This is another issue that we certainly can talk about, using versus filing.
Cheryl: We'll get into that. In the United States, what people don't realize is in other parts of the world, you don't have to use a mark before you file it or to keep a registration at least, you can actually register it all the way to registration without having used the mark in Europe. It's first to file. That's I think what you're referring to.
Bill: Yeah, this fellow jumped in and filed first. There was such a public outcry, twofold. Number one, was he going to go after this poor little bookseller who was eking out a living selling posters, and who had discovered it in his basement?
Number two, “wait a minute, this should be the property of the British people.” What is this guy doing? This is something that should be in the public domain. He is proceeding with his business but there has been a backlash apparently against him because of this sort of public domain argument, that this is a phrase that all of the British people have.
The other interesting part is in terms of this fellow's business is it has now been copied incredibly, a whole variety of different ways. For example, I'm going to read you a quick list of something. I went on and found, “Keep calm, drink tequila,” “Keep calm and carry out,” I guess for a carry out food business.
“Keep calm and let me fix your hair,” “Keep calm and have a cocktail,” “Keep calm and keep shopping.”
Cheryl: I like that one.
Bill: I like keep calm and have a cocktail. Now, he's going to live by this or die by this. Again, he adopted a phrase with very common words in it.
Cheryl: He has an uphill battle if he wants to maintain it because technically, he's supposed to go out and police his mark. That's going to be quite expensive to go after all those people.
Bill: Also, he has this other public perception problem that he's taking something that belongs to the British people. This was their rallying cry in World War Two or whatever it might have been. He has moral grounds to defend as well. It's still unfolding. This is what's happening as we sit here.
It's evidence of this bandwagon effect, that something catches on and everyone wants to capitalize on it. It's so important to, if you do think of something, even if it's not one of these bandwagon things, if you just think of something on your own for your own business, to try to protect your trademark rights as soon as possible.