Can Phrases Be Trademarked?

Dear Janet,

Can you point me in the right direction about trademark law? I have a very simple question about it and am not sure where to go to get the answer. What I need to know is whether phrases like: ‘Angels in the Wings’ can be trademarked or copyrighted so no one other than the originator can use them when writing a book. If they are trademarked or copyrighted, how would I go about finding this out?

–AJ

Dear AJ, 

Phrases can be trademarked to prevent others from using them. However, nothing is ever simple when it comes to the law–especially trademark and copyright law (intellectual property law). So, to answer your question, a trademark may, or may not stop you from using the phrase in question. Here’s why:

The deciding factor would be whether such usage in a book (or elsewhere) would be likely to confuse the average consumer and make him or her believe the book is endorsed, sponsored, or approved by the owner of the trademark. 

“Typically, the more famous a trademark, the greater the risk that the public could be so confused,” explains intellectual property attorney Thomas O’Rourke. “Although there are a number of factors that need to be considered in making this determination, one that will be very relevant is whether the book is perceived as “riding on the coattails” of the mark. If a mark is well known and the book title is using the fame of the mark to boost the marketability of the book, then there will probably be infringement. If the mark is not famous or well known and the subject of the book has nothing to do with the goods or services that the mark is used with, then there is probably little risk of trademark infringement.”

Determining whether a trademark exists at all for the phrase you want to use won’t be easy, either. You can start off by searching the US Patent & Trademark Office trademark database. That’s available on the web at http://www.uspto.gov/tmdb/index.html. Searches are free. It is important to note, however, that the database covers only registered trademarks and pending applications. And, trademarks don’t have to be registered to be valid. “There can be unregistered trademarks in use that have valid rights to a name,” explains O’Rourke. “These usually can be found through commercial services that will do a search that will uncover unregistered trademarks.” The cost of a commercial search is about $400, but keep in mind, says O’Rourke, that “no search is ever completely accurate as some uses may not show up.”

Thomas O’Rourke is a partner in the law firm of Wyatt, Gerber, Meller & O’Rourke located in New York City. He can be reached at 631- 249 7500.