The Todd M. Beamer Foundation, established in the name of one of the heroes of Flight 93, wants to trademark Beamer’s famous last words: “Let’s roll.” Can it do that?
Maybe. Common words and phrases can be trademarked if the person or company seeking the trademark can demonstrate that the phrase has acquired a distinctive secondary meaning apart from its original meaning. That secondary meaning must be one that identifies the phrase with a particular good or service. In this particular case, the Beamer Foundation wants to trademark “Let’s roll” for use with “charitable fundraising services.” The foundation will have to argue that, after Sept. 11, the public has come to identify the phrase “Let’s roll” with Todd Beamer and the work done by the Beamer Foundation. Legal experts say that it’s unlikely that the Beamer trademark would survive a legal challenge, but it’s not inconceivable.
[Correction, 3/1/02: Trademark attorney Mike Zadrozny tells Explainer that the Beamer Foundation would not need to demonstrate a “secondary meaning” for “Let’s roll” in order to trademark the phrase. Click here for the full explanation from the Explainer Mailbag.]
What is a trademark, exactly? It’s a “word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of goods of one party from those of others,” says the U.S. Patent and Trademark Office. There are two key elements in that definition: 1) Trademarks protect commercial products and services. Trademarking “Let’s roll” won’t stop you from using it in everyday conversation. 2) Trademarks identify the source of goods and services. Therefore, either your trademark must be inherently distinctive, identifying you as the source of a product, or your trademark must have acquired distinctiveness—you must prove that the public identifies your trademark with your particular good or service and with you as the source of that good or service.
You don’t have to register your trademark with the federal government to receive trademark protection. Merely using a trademark in the marketplace confers rights, such as prohibiting people from copying it in order to create confusion among consumers. But registering a trademark with the federal government provides nationwide trademark protection, rather than merely local protection under state law. And it gives the owner the ability to defend a trademark in federal court.
A trademark does not mean, however, that no one else can use your word, phrase, or symbol in connection with any and all goods and services. It means only that somebody else can’t use a similar trademark with similar goods or services. The key criterion: trademark infringement occurs when someone else’s use of a trademark would likely cause confusion about the source of goods or services. Avon, for example, has trademarked “Let’s talk” for a variety of commercial uses, including door-to-door retail merchandising. But that hasn’t stopped another company from trademarking “Let’s talk” for use with voice-activated computer software, because consumers are unlikely to get confused and believe that Avon is pitching software, or that a software company is hawking lipsticks.
Congress has carved out an exception to this “confusion” rule for “famous” trademarks. The owner of a famous trademark can stop other people from using that mark even if there’s not likely to be any consumer confusion, if the other person’s use would “dilute” the famous mark. For example, “Kodak” is likely to be considered a famous trademark as applied to cameras and film. If Explainer were to start selling “Kodak shoes,” consumers probably wouldn’t get confused into believing that Kodak was extending its brand into the footwear market. On the other hand, if many companies started advertising unrelated products as “Kodak,” Kodak’s camera and film trademark would likely decrease in value. So Congress has banned that practice.
Bonus Explainer: What’s the difference between trademark, copyright, and patent? Trademarks protect the words and symbols that identify the sources of goods and services. Patents protect inventions and improvements to inventions. Copyrights protect artistic or literary works.
Unlike copyrights and patents, trademarks can be perpetual, as long as a company keeps using its trademark. The only way to lose a trademark is if the trademark becomes the generic name for the product or service. (Generic descriptions for products, such as “cereal” or “beer,” can never be trademarked.) “Thermos,” for example, was once a trademark for a specific brand of “vacuum bottle,” but now “thermos” is a generic term. Xerox is one company that worries about losing its trademark for this reason.
Double Bonus Explainer: What’s the deal with those “™” and “®” symbols? The “®” symbol indicates that a trademark has been federally registered with the U.S. Patent and Trademark Office. The "™” symbol means only that someone claims that their word or symbol is a trademark.
Explainer thanks Tony Reese of the University of Texas School of Law.