It’s reaching a crescendo! Taylor trademark-mania is striking an unlikely note in the world of trademark law.
This is actually the second time in six months I’ve delved into the world of Swift-marks. The thing is — she’s not wrong. One can debate the need or wisdom of seeking trademark protection for a slew of song phrases or titles (“Party Like It’s 1989” or “This Sick Beat”). One of the things which has made her trademark filings an easy target is the way in which her representatives have filed the applications. The Trademark Office permits an applicant to select from one to forty-five categories (or “classes,” as they are called) in which to pigeonhole its products or services. Each class incurs an extra fee, and there is no discount for filing additional classes in the same application.
Whether you file a single application in sixteen classes, or sixteen applications in one class, the Trademark Office will charge the same amount. So, while some companies — or performers — may file a single application to cover several classes, such as music, fragrance, entertainment services, clothing and others, Taylor can choose, as she has done, to file sixteen separate applications, one for each of those products. (More on that in a minute.)
Taylor Swift (photo credit: David Shankbone)
The singer-songwriter was already taken to the cleaners in the media last year when she ran into a lawsuit on her favored “LUCKY 13” trademark (see ‘Star Wars’ — How Will Taylor Swift’s Empire Strike Back In The Lucky 13 Lawsuit,Forbes, June 2, 2014). Now we have seen how the “Swift Empire” has struck back, and it for the most part is as predictable as the rest of the lawsuit. First, they tried to get the suit discussed. The judge would not have any of it, and denied that motion without even waiting for an oral hearing. Both sides appear to be in the throes of discovery, where they demand documents and proof, and take witness testimony in depositions.
Both sides appeared to brief the legal issues well. Of course, there were a few comments aimed at minimizing the fame or questioning the motives of the plaintiffs. The plaintiffs, Lucky 13, did invoke the names of Elvis, Linda Ronstadt, and Johnny Cash to show that those famous performers of rockabilly music were mainstream enough to be confused with a general pop audience like Ms. Swift’s. Both sides showed admirable restraint in not filling their briefs with clever turns of phrase from the Taylor Swift songbook. I once had a case against Don Henley and the Eagles; how tempting it was to fill our briefs with his signature lines, like “kill all the lawyers, kill them tonight” and “lawyers clean up small details.” But just like the two sides in this case, I resisted. (In fairness, Mr. Henley was nothing but cordial despite the musical sentiments.) The Taylor Swift parties have done nothing out of the ordinary in this lawsuit. If the parties do not settle (which I would suspect they will) the court will decide if Taylor Swift’s merchandise infringed. No more, no less.
But what Taylor Swift has done with her new trademark applications is actually a teach-able moment in the trademark application process. Because, in fact, there can be a good reason to do what the Swift camp has done. A trademark provides protection for specific goods, namely, those on which you are using your mark. What if there are one or two other trademarks which you think may act as a speed bump along your road to registration? A prior registration will stop you from registering on the same or similar goods, but not on all other goods. So, while “Gallo” for wine may make it impossible for you to register your similar mark for wine, and hard even for you to register “Gallo” for certain other beverages, it will not stop you from registering “Gallo” for air conditioners.
If Taylor files a single trademark application for all classes in one combined application, just one prior registration for any of her products or services will hold up the entire sixteen-class application. Choosing to file separately for each class, though slightly unconventional, is hardly a unique approach. If someone else’s mark will become a problem, it will only slow down her efforts in one class, not all sixteen. There are other reasons (having to do with setting herself up for possible foreign trademark applications, for instance) to take the approach she has. But in truth, there is way less here than meet the eye. If the Taylor Swift Empire wants to protect words and phrases for use on t-shirts and merchandise, of course they will try to protect them.
This post originally appeared on Forbes