Does Taylor Swift plan to become the Martha Stewart of the music world?
It’s a question asked half in jest, but something to consider given Swift’s recent applications to apply trademarks of her song lyrics to a variety of household items. The phrases from her latest album include “this sick beat” and “Party Like It’s 1989,” prompting some artists to accuse Swift of trying to “own” common words. But a closer look might persuade them she actually has an intriguing trademark registration strategy.
It is highly unusual, if not unprecedented, for a recording artist to trademark lyrics (as opposed to album titles, tour titles, and the artist’s own name which are common subjects for registration). The more commonly registered marks are typically registered for performances and related services, and for the various categories of souvenirs you expect to find for sale at the concert venue and online. Ms. Swift’s filings are further unusual due to the breadth of items to be covered (more on that below) and for the fact that instead of filing one application for the 16 classes, she submitted 16 individual applications for the two marks. She also applied to register a handful of other lyric-based marks in far fewer classes and for more traditional goods and services.
Filing that many individual applications when one would have done the job is cumbersome and costly. It is also one way to ensure that an application isn’t blocked in all classes due to a problem in one or more individual classes. But the strategy is also a tipoff. Perhaps her representatives determined it would be easier to license these different categories if there were separate trademarks. Or maybe she made multiple filings purely for defensive purposes and she has no intention of putting the phrases on the items she’s listed in the applications. She may merely be acting to keep others from registering the phrases for their own merchandise.
Skeptics could certainly point to recent actions by her lawyers to support the negative view. They have been aggressively protecting trademarks she already owns. They’ve gone after sellers on the online site Etsy, who infringed by selling unofficial Swift goods including a tee-shirt that was printed with a lyric from one of Swift’s songs. But filing separate applications is actually an approach Swift’s lawyers have used in the past when registering her name, initials, and album titles.
Intent to Use
Trademark applications can be filed based on either “actual use” of a mark in commerce or as an “intent to use” as a mark in commerce. All of Swift’s recent applications are based on intent to use. That means that if they are approved she’ll receive a “notice of allowance” instead of a trademark registration. She’ll then have six months to file a statement that says she’s using the trademark on all of the goods in a given application as intended. If that is not the case, she’ll have the option to file for a six-month extension and can actually apply for and receive up to five additional six-month extensions. She can also delete items from the application or divide the application in order to obtain registration for those goods in actual use while leaving the remainder of the goods subject to a separate intent to use application.
Typically someone files for an extension when they have continued to take steps towards using the mark but have not yet sold anything in interstate commerce. It is not unheard of, however, for applicants to keep their applications alive simply to keep at bay others who want to use the trademark for a similar purpose. It’s not illegal to use extensions to stymie competitors, but there must be a bona fide intent to use the trademark with all of the goods or services listed in the application, and the applicant must truthfully represent that she is continuing to take steps towards using the mark in commerce. The point of adopting the “intent to use” system in the United States in 1989 was to prevent applicants from “warehousing” trademarks. Before then, consumer goods companies in particular would often ship a handful of sample products across state lines and then file for trademark registration claiming that the token shipment demonstrated “use.”
Though submitting 16 individual applications for 16 classes is unusual, it is consistent with the way Swift’s lawyers handled older marks. That suggests she probably seeks these trademarks for licensing purposes. In the past she has done this with her name and her album titles. That’s common because album titles often become the names of tours and the basis for the merchandise that is available at concerts or to order from her online store.
The subject matter this time is much different. In one class she has applied to trademark, the phrase “this sick beat” and “Party Like It’s 1989” on beverage ware, cookware, glassware, kitchenware, household utensils, hair brushes, napkin holders and candle holders, among other items. Ordinarily you don’t buy those items at a concert.
One songwriter expressed his resentment of Swift’s trademark campaign by creating a song comprised entirely of the lyrics “this sick beat.” But beyond that, how could someone challenge what she’s doing? Imagine that you produce novelty napkin holders imprinted with the phrase “this sick beat.” After you go to market you come to discovered Swift’s application to register the trademark for napkin holders. You’d have a number of options to defend your right to sell. If your use commenced before the filing date of Swift’s application, you could oppose her registration (or rebut an infringement claim) by arguing that you used the phrase first on napkin holders and that her later use does not trump your common law rights. On the other hand, should your first use commence after Swift’s filing date, you could attack her registration on grounds that she lacked a genuine intent to use the phrase on napkin holders at the time she filed the application and was only hoarding the trademark to prevent you and others from using it. Of course that argument will only succeed if Swift does not sell appropriately branded napkin holders yet fails to remove this item from her trademark application before a registration issues.
In reality, you typically don’t find recording stars in controversies over napkin rings or pot holders. Nor can we assume that Taylor Swift is taking her business empire in a new direction. But by understanding the trademark filing process we see she is trying to protect her options. Watch out Martha!
Lawrence R. Robins is a partner in the Intellectual Property Group of Sullivan & Worcester (Boston, New York, London, Washington, DC), specializing in trademark and copyright clearance, prosecution, maintenance, and litigation. Any seemingly negative implications to the contrary, he is a big Taylor Swift fan! For more information, visit www.sandw.com.