As a trademark attorney, devoted Baltimore Ravens fan, and furtive TMZ reader, I couldn’t help but notice this story authored recently, describing how Mark Ingram’s aspirations of registering BIG TRUSS in the US Trademark Office are (potentially) being blocked by someone who applied to register the phrase first.
For those uninitiated, “Big Truss” is the pet name for Ravens quarterback Lamar Jackson, coined by Mark Ingram, Ravens running back. Mark and Lamar’s well-documented bromance is one for the ages. The phrase first captured public attention when Mark Ingram uttered it in a November 21, 2019 press conference, although the origins of “Truss” appear to date back much further, to a 1991 album by Public Enemy, as this fascinating Baltimore Sun article explains. The BIG TRUSS application blocking Mr. Ingram’s attempts to register the phrase was filed on December 13, 2019 – 3 weeks after the aforementioned press conference, and candidly, a lifetime in the trademark world.
Which raises the question – how can some (presumably random) person acquire trademark rights to a phrase they didn’t coin? To answer that, it’s important to understand a few things. First, it can be done because U.S. trademark rights are based on use of a mark in connection with the sale or distribution of goods or services, and not mere coinage of a term. Applicants may even file applications in the Trademark Office based on “intent to use” – meaning the applicant isn’t using the mark currently, but intends to do so in the future. But in most cases, the applicant will eventually need to prove use of the mark to obtain a federal registration.
And herein lies the problem for many opportunistic applicants: “Use” in some circumstances can be very hard to prove. Most opportunistic applications cover clothing and other merchandising items, about which the Trademark Office is particularly strict. For instance, if “Big Truss” appears on the front of a t-shirt, or across the back shoulders of a jersey where a player’s last name would normally appear, those kinds of displays may not be considered proper “trademark use.” To qualify as proper trademark use for clothing, “Big Truss” would likely need to appear on the inside clothing label, or on a tag affixed to the clothing, where consumers would be accustomed to seeing a clothing brand (like Nike or Adidas) appear. Many opportunistic applicants fail to consider this, and have their applications refused registration on the ground that use of their mark is merely “ornamental.”
Since the failure rate for “opportunistic” applications is high, others considering registration of similar phrases might decide to file applications of their own anyway, so that they are “next in line” for evaluation if and when the blocking applications lapse. In fact, the Trademark Office will usually agree to suspend further action on an application that’s being blocked by a prior application until either the prior application lapses or matures to registration. You can beleedat. (Important note for opportunistic applicants: as of my writing of this post, no one has applied to register “Beleedat” – title of the 2019 Ravens playoff anthem – in the Trademark Office. Bets on the time until that changes?)