Can I trademark this sick song lyric?

Taylor Swift recently made headlines for attempting to register her song lyrics as trademarks. In October of last year, Swift applied to register several song lyrics as trademarks, including:

"This sick beat"

"Nice to meet you. Where you been?"

"Party like it's 1989"

"Cause we never go out of style"

"Could show you incredible things"

Swift's trademark applications left many wondering whether the pop singer can prevent people from saying things like "nice to meet you, where you been?" and led Ben Norton to write the now-famous two-minute protest song called "This Sick BeatTM." While Swift cannot stop people from speaking (or singing) short phrases from her lyrics, her trademark applications are evidence of her plans to capitalize on the fame of these lyrics.

Generally, musical lyrics, song titles, and album titles are not subject to trademark or other intellectual property protection - but it is possible. Swift filed her trademark applications on an intent-to-use basis for a variety of merchandise items, like cellphone covers and clothing. If she can show trademark use on the applied-for merchandise items, then the trademark office will likely grant the registrations.

Why Trademark Protection?

Artists are increasingly seeking creative ways to protect their lyrics, song titles, album titles, and other unique aspects of their performances to prevent third parties from capitalizing on these elements.

A trademark registration provides the artists with the exclusive right to use the mark on the products and services specified in the registration, and them to stop others from using the same or a confusingly similar marks.

There is no shortage of opportunists trying to capitalize on artists' creativity. Within days of Katy Perry's Super Bowl XLIX performance, several entrepreneurs began selling merchandise featuring the now-infamous "left shark." In response, Perry filed applications to register the trademarks "left shark," "right shark," "drunk shark" and "basking shark," and applications to register images of the sharks.

Examples of Success

Swift and Perry are not the only artists turning to trademark protection. Several have successfully registered for protection.

Dr. Dre obtained a trademark registration for his album title "The Chronic" for musical sound recordings and clothing in 2014. Then on Feb. 25, 2015, the rapper filed a trademark opposition against a cigar company called New Image Global Inc. that wanted to register "Chronic E. Blunt" for rolling papers.

Justin Timberlake registered the trademark "Suit & Tie," the name of one of his songs, for clothing in 2013. He also obtained trademark registrations for his album titles "Futursex/Lovesounds" for musical sound recordings, and "The 20/20 Experience" for musical sound recordings and clothing.

Timberlake also filed trademark applications for his song titles and lyrics "Motherlover," "Bringin' Sexy Back," "Sexy Back" and "Drink You Away," presumably to reserve his rights in those marks for merchandise. The trademark office has approved all for registration once Timberlake submits evidence that the marks are being used for the merchandise products.

Lady Gaga filed trademark applications for her song and album title "Artpop" for luggage and travel bags, clothing, and other products and services. She recently filed a statement of use for luggage and travel bags; if the trademark office accepts it, then her registration for these products will be approved within the next couple months. Lady Gaga also owns registrations for "little monsters" (the nickname of her fans) for services associated with her fan club.

Marshall Mathers, aka Eminem, successfully obtained trademark registrations for "Slim Shady" - from his song title "The Real Slim Shady" - for clothing and other products and services. Likewise, Alecia Moore, aka P!nk, applied for her album title "You + Me" for clothing, and the trademark office has recently approved the application for publication.

Beyonce obtained a trademark registration for her alter ego's name "Sasha Fierce" for clothing and other products. However, she abandoned her applications for "Sasha Fierce" for entertainment services, books, and fragrance after Abercrombie & Fitch threatened to oppose the applications based on its "fierce" trademark.

Kanye West has filed several trademark applications for his album title "Yeezus" and for his book title "Thank You and You're Welcome" for a broad variety of products ranging from toys and dolls to cosmetics, from clothing to bedding. Like Swift's applications, if West can successfully show trademark use on the merchandise, the trademark office will likely grant him trademark registrations.

Potential Obstacles

Title of a single creative work. As a general rule, the trademark office could refuse to register album titles and song titles for musical sound recordings if they are the title of a single creative work, as opposed to the title of a series of works. The same is true for movie titles and book titles. In other words, the title of a single creative work is considered merely descriptive of that work and is not considered to function as a trademark to identify the source of the product.

However, if an album title has been used on more than one album, then it is possible to register the album title as a trademark for musical sound recordings. For example, Dr. Dre did not face this obstacle for his album title "The Chronic," presumably because the "specimen" he submitted to the trademark office showed use of the title on more than one album.

Conflict with prior trademarks. If another party has prior registered or common law trademark rights in the same or similar mark in connection with the same or similar products or services, then either the trademark office or the party can object to registration of the trademark, as happened to Beyonce with her "Sasha Fierce" registration.

A prior user of a trademark may also object to an artist's use of an identical or confusingly similar mark on products that are the same or similar to those sold by the prior trademark user. It is essential to conduct a trademark clearance search before filing any trademark application or beginning use of any trademark.

Ornamentation. The trademark office can also refuse to register a trademark if the mark is used on merchandise in a merely ornamental fashion. For example, if the mark appears prominently across the front of a T-shirt, as opposed to on the back label of the shirt, consumers may not see the use to be a trademark use, i.e., a use that identifies the source of the product. If Katy Perry were to use the left shark design on cellphone covers, the trademark office could refuse to register it; she would then have the opportunity to argue against the refusal.

It is possible to overcome an ornamentation refusal by showing that the use of the mark is not merely ornamental or decorative, but that it identifies the source of the product. It is also possible to overcome refusal on the grounds that the mark serves as an identifier of a "secondary source." For example, the prominent use of a song title on the front of a T-shirt can convey to the purchasing public that the artist is the "secondary source" of the T-shirt (rather than the manufacturing source), since the public recognizes that the artist sponsored or authorized the T-shirt.

Artists are increasingly turning to trademark protection to protect their musical lyrics, titles and even designs. While musical lyrics and titles are not generally subject to trademark protection, artists who are creative in the trademark registration process and can form a business plan which provides for actual use of their trademarks on merchandise, can win trademark registrations that provide them with exclusive rights and the ability to stop third party use.

Jocelyn M. Belloni and Sharoni S. Finkelstein are associates in K&L Gates LLP's San Francisco office.