Trade Marks: Does registering a phrase mean that you own it?

Background

Allie Rose Co. was founded in 2020 and is a small business which sells various book themed products, including stationery, bookmarks and clothing.

The owner recently announced that she had successfully registered a trade mark in the US for the phrase “Hot Girls Read” to protect the products sold by Allie Rose Co that included this phrase.

However, the announcement prompted significant criticism on social media, with many suggesting that it was inappropriate to register a phrase that was widely used within the community and by other small businesses.

The owner surrendered the trade mark in response to the criticism and apologised for any harm it caused to other small businesses.

This highlights the challenges many businesses face when it comes to protecting phrases as part of their brand identity.

The legal position 

In the UK, all trade marks need to be distinctive. The IPO assesses this by considering whether the average consumer would be able to distinguish the goods and services provided under one trade mark from another. The IPO will reject applications which do not meet this threshold, including phrases that are commonly used by the public.

It is more difficult to achieve distinctiveness with a phrase than for company names or logos because consumers do not typically associate them with a business to the same extent. However, if the IPO examiner does not recognise the phrase as being commonplace, it may still proceed to registration, as was the case with the trade mark for “Hot Girls Read”.

However, having a registered trade mark is only beneficial if it can be enforced. A third party can apply to invalidate a trade mark if they believe it is non-distinctive and should be free for everyone in a similar trade to use. This can be a difficult claim to overcome, especially if other businesses have been using the phrase prior to your registration for similar goods and services.

Comments

The publicity surrounding the “Hot Girls Read” trade mark is a good example of why businesses should carry out their own due diligence and consider the wider context before submitting an application. Failing to recognise that a phrase is already used by other businesses does not only expose the trade mark to being challenged but can also generate negative publicity and cause reputational damage.

This does not mean that brands cannot protect products that feature a non-distinctive phrase. If the phrase is used in a stylized format (eg in a specific font or with surrounding imagery), it may be possible to apply for a figurative trade mark instead. This would provide the owner with protection for the design itself rather than exclusive rights to the words, allowing other brands to continue using the phrase in different formats but still providing the owner with protection over their products.

If you have any questions as a result of this article, please contact our Commercial, IP & Technology Team at: commercialtechnologygroup@fsp-law.com or visit our group page.