Makeup company Hard Candy learned the hard way that a simple trademark application can quickly turn into a PR nightmare. Hard Candy’s #metoo trademark joins other trademark debacles like the Fine Brothers’ “Reaction Videos” application, Gene’s Simmons attempt to register the “metal horns” and Sony’s “Let’s Play” application, where consumer anger over an attempt to protect what belongs to a community lead companies to backtrack and withdraw their claims.
The sobering lesson is one that should be heeded by all trademark applicants – protect what is yours, but don’t attempt to claim exclusive rights in a word or phrase that identifies a community or movement, not a single company.
Hard Candy’s #metoo Trademark Application
In October 2017, the makeup manufacturer Hard Candy applied for a trademark to sell cosmetics and fragrances under the name #MeToo. This hashtag has been the rallying call behind the women’s movement in regards to speaking out against sexual harassment.
People did not take well to Hard Candy applying to use this mark to sell their goods – according to TMZ, some even accused the company of trying to “to glamorize, commercialize and capitalize on rape culture”. Since then, the company withdrew the application on January 18th based on the public response.
Other Companies Have Learned This Lesson Before
This is not the first time a private entity has applied to a trademark for a name or phrase that’s in use in the popular domain. In fact, there are three other live applications with the USPTO that contain the #MeToo hashtag – two are for legal services, and the other is for a rubber or silicone wrist band.
There are almost 30 filings that reference “Black Lives Matter”, “All Lives Matter” or “White Lives Matter”.
However, this particular filing seems to have touched a nerve since some view makeup products and marketing as being “at odds” with the movement’s underlying message. This is despite Hard Candy’s CEO stating that it was their intent to donate 100% of proceeds from the branded products, and to bring attention to the movement.
This filing also underscores the need to have potential trademarks reviewed by an experienced attorney. When a USPTO attorney reviews a trademark application, one of the grounds for a refusal is “failure to function” as a trademark. An experience attorney can recognize this and ask the questions needed to help counsel potential applicants on the dangers involved in trying to claim exclusive rights in a specific word or phrase under trademark law.
A word or phrase that is likely to be inextricably connected to a movement, event, or other occurrence and not the products or services listed in the application is unlike to function as a trademark.
Common Words Can Still Be Trademarks
That isn’t to say that common words and phrases cannot act as trademarks – a company owns the trademark “AWESOME” (Reg. No.5172163) for “Providing a web site featuring technology that enables internet users to submit comments of personal recognition.”
However, the USPTO has rejected “Boston Strong,” “Black Lives Matter” and other grassroots phrases because they simply are unable to function as trademarks after becoming popularized by current events. It’s likely that had Hard Candy not withdrawn the application, it would have been denied by the USPTO anyways.