Samuel Adams on display at A Dinner, part of the Bank Of America Dinner Series during Food Network & Cooking Channel New York City Wine & Food Festival at Tavern On The Green. (Photo by Ilya S. Savenok/Getty Images for NYCWFF)
It happens every time. There’s a new term the public and the media have fallen in love with. Last month, nothing was bigger than “Brexit.” Then people try to monopolize that term by filing applications in the U.S. Patent and Trademark Office. Someone cries: “They can’t do that!” The response, as in many legal things, is “maybe they can, and maybe they can’t.” Samuel Adams beer is the perpetrator this time. Can they, or can’t they? We’ll get to that below.
Let’s start with the basics. There is no law that says no one can have exclusive rights in a word. But it’s obvious that is not true when you look around at trademarks. Perhaps you’ve heard of “Apple” which is used by a computer company. Can they monopolize use of the word “apple?” Well, if it’s to sell computers and telephones they can. But can Apple claim exclusive rights to use the word “laptop” or the phrase “notebook computer?” No, because those are the words that are used every day by the general population to identify those products. That is different from when you take a word out of the dictionary and apply it fairly arbitrarily to your product, such as “Apple” for a computer. Then, you have a claim for trademark rights. You cannot take the common name for the word out of circulation if it is the name of the product itself, like “notebook computer.”
So with that refresher course on trademarks, what does this have to do with “Brexit?” Well, since “Brexit” is the coined term for British exit, as in “British exit from the European Union,” it would be difficult for anyone to claim exclusive rights to use the word for that purpose. In other words, no one can monopolize rights to the word “Brexit” by racing to the Trademark Office and filing the first application, and thus preventing anyone else from freely using this word.
A man waves both a Union flag and a European flag together on College Green outside The Houses of Parliament in Central London (Photo credit JUSTIN TALLIS/AFP/Getty Images)
Lesson two is that trademark rights do not exist in a word by itself, but in a word as it applies to particular goods or services. Provided that is the key — the use of that word is not trying to monopolize either the actual discussion of Great Britain’s exit, or products and services directed toward exiting the European Union — it is perfectly possible for a company to stake out an exclusive claim to use “Brexit” on its goods.
People in just about every industry have been bombarded with advice from professionals about what “Brexit” means to them. I know that our colleagues in the UK are generating encyclopedias (remember those?) worth of scenarios for how Brexit may affect your trademark law practice and the rights of your trademark clients. If one of my colleagues in England wanted to claim the exclusive right to use “Brexit” as a mark for advising on the impact of Britain’s departure from the European Union, they couldn’t do it.
None of this means that Sam Adams can’t claim rights in “Brexit” for a type of beer. Could you call beer “Escape Hatch” brand beer, or “Nation First” brand beer? Yes. And “Brexit?” If we put aside the separate legal issue of whether consumers would think “Brexit” beer comes from England, the answer is yes again.
One company has sought to register “Brexit” for T-shirts. (Consider the question of whether people really want to buy “Brexit” T-shirts.) If “Brexit” becomes a brand of T-shirt to identify the company selling these goods, “Brexit” can function as a valid trademark. If “Brexit” is just used on a T-shirt as a slogan, it may not really function as a trademark. A trademark tells you the source of the product: a consumer who looks at a T-shirt with a logo that says “Brexit” may view Brexit as some kind of political, satirical or comical statement about Brexit; they are not going to think “Brexit” is a brand of shirt. If that’s the case, Brexit does not become a protectable trademark.
Let’s see who else is trying to protect “Brexit.” There is a company called Quicksilver Scientific located in Colorado which filed an application to register “Brexit” on June 24 for a range of dietary and nutritional supplements. From what I can tell, this just seems like they think “Brexit” can be a clever name for one of their supplements. If that’s all that’s going on, they probably can be the first to claim rights in this term and to register it under the right circumstances.
Then we find the application filed on June 24 (like all the others above) by the Boston Beer Corporation (Samuel Adams) for hard cider. People sometimes get up in arms about this type of trademark filing. But really all a company has to lose is a few hundred dollars for filing an application in the Trademark Office.
This brings me to the next point. What is the benefit of filing an application in the Trademark Office? As many people know, trademark rights begin when you start to use a mark. If you are using “Brexit” already to sell products or services, you start to earn trademark rights, regardless of whether you file in the Trademark Office. What if you haven’t used it yet? The only way in the United States to acquire trademark rights without having use of the trademark is by filing an application with the U.S. Patent and Trademark Office. File a trademark application and you block trademark rights against anyone else who has not yet either: (1) used the mark, or (2) filed an application.
A small minority of observers (ok, bloggers) claim this is a type of profiteering from a very difficult, serious political crisis. They look to analogize the situation to limiting registration for immoral or scandalous words. Courts are struggling with “immoral” and “scandalous” right now. The “Redskins” case questions whether that is a racist term applied to a mascot which is Native American. A band called “The Slants” comprised of Asian band members raises another issue. The Trademark Office has suspended action on any trademark application which is arguably immoral or scandalous until the courts sort this all out. “Brexit” does not fall under this prohibition.
The concept of international divorce may not be a big winner for a lot of products and services. But if it looks like it will work for you, you might be able to jump on the Brexit bandwagon. (Trademark-wise, anyway.)
This post originally appeared on Forbes.