If I had a nickel for every time someone called to trademark a phrase by simply slapping it on a t-shirt, then anybody visiting my office would comment, “Dave, you’ve got a ridiculous amount of nickels!”
As a hypothetical, consider the somewhat recent expression “rizz,” short for “charisma,” as in, “so-and-so has some major rizz.” Already, a couple of dozen trademarks are incorporating this word (e.g., Rizz Spice, RizzGPT, Full Rizz) on the federal registry for everything from phone cases to fireworks. But it wouldn’t be uncommon for a potential client to call wanting to trademark RIZZ for t-shirts with the idea of “owning” the term.
Over the years, I’ve noticed a misapprehension about a trademark’s power and purpose. These potential clients seem to believe that if they can register a trademark in a term they can pull it out of the public domain and demand licensing fees for the term’s commercial use (or perhaps retroactive payments for unauthorized use). It’s not so easy, though, to commercialize a term.
The United States Patent and Trademark Office will most likely view the term as merely ornamental. This means that the term does not indicate a source of specific goods, but merely functions to make the goods more enticing to purchase, and more aesthetic. If the sole purpose of a t-shirt’s feature is to make it more appealing for purchase, then the feature only provides aesthetic functionality.
In a lead case on this concept, In re Villeroy & Boch S.A.R.L., a tableware company sought to register the floral designs used on its plates, saucers, bowls, vases, pots, and jugs. However, the Trademark Office pointed out that floral designs were commonplace for tableware, serving to draw the eye, and simply make the goods prettier. A consumer seeing the floral pattern will not conclude that the design indicates a source for those plates with that company’s associated reputation for quality, warranty, etc. The typical consumer looking at the typical floral pattern will discern whether or not the tableware will be appealing when used at a dinner party or on a day-to-day basis: aesthetic functionality. Therefore, the ornamentation does not automatically translate into a trademark use.
Likewise, a t-shirt with RIZZ, or some other trendy expression across the front, does not automatically translate into a trademark, as most consumers would simply want a shirt with a clever word or phrase on the front. From that, the consumer would not likely conclude the quality of the t-shirt, which is as it should be: words like these arise organically and belong to the public domain.
One could take a few actions to make RIZZ a trademark on its own. For example, one could register the business entity RIZZ LLC and put that on the hangtag of the t-shirt (as well as across the front). That would show the USPTO that the word might be ornamental (on the front of the shirt) but is also the item’s source (on the hangtag). Moreover, one could make RIZZ part of a larger logo with a graphic element and stylized font.
Remember federal trademarks are only for goods and services that have been sold across state lines. Also, the USPTO always requires a specimen of trademark use: the trademark should generally be separate and apart from other text and images (i.e., obviously a trademark as opposed to one word or image among many words or images); the trademark should be proximate to a description of the goods or services (e.g., a photo of the t-shirt with the hangtag clearly visible), and proximate to a method for the consumer to consummate a purchase. In short, if you wanted to register a trademark for RIZZ on t-shirts, then you should have a legitimate business that is passionate about selling quality t-shirts, and RIZZ just happens to be your brand.
Please contact me at davefaux@dhf-law.net with any questions.
