In October of last year, Warner Bros. attempted to register the famous “Harry Potter” phrase, “I solemnly swear that I am up to no good.” As intellectual property owner of the Harry Potter movie series, Warner Bros. filed the application for a variety of different products.
The examining attorney assigned to this trademark application issued an initial denial for two main reasons. First, the examiner felt that this was an informational slogan that conveyed information and was not registerable as a trademark. Second, the examiner found that the registration of this would create a false association with the “Harry Potter” book series, and particularly the book titled, “Harry Potter and the Prisoner of Azkaban.” It would be confusing to consumers if it was registered by Warner Bros.
The second issue can likely be overcome because Warner Bros. probably has an agreement with the author of the “Harry Potter” book series that would allow them to make these kinds of filings. For example, they own “Muggle” for a variety of things, including clothing. So, you would assume that if the examiner was going to object to Warner Bros.’ reuse and registration of these phrases, it would have been done a long time ago.
On the other hand, the first issue is particularly interesting because it represents a huge shift by the Patent and Trademark Office towards not allowing commonly used words or phrases to be registered as trademarks. Some examples of phrases that were found to not be protected under trademark law are the phrases “Drive safely” and “Proudly made in America.” The examining attorney here said that, “I solemnly swear that I’m up to no good,” falls into this category of such widely used phrases by such a large variety of people that no one would think that any one company would produce all of the different goods or services that have used this popular phrase, or, as the examining attorney said, “One of the most famous quotes to come out of the Harry Potter universe.”
Now, this doesn’t mean that you have free rein to use any Warner Bros. IP assets as you wish, but it is an interesting denial. I’m sure Warner Bros. is going to be fighting this vigorously because of their other Harry Potter related filings that may have widespread use by a variety of people and platforms, such as Etsy and Amazon.
It’s important to note that each of these situations is judged on its own merit and that there’s no one-size fits all approach. So, if you have questions, feel free to reach out to any of the attorneys at Gerben Law Firm.