Oprah – Own Your Power

Can A Catch Phrase Be a Trademark?

Recently, Oprah Winfrey won a long-running trademark dispute in New York Federal Court over her use of the words “Own Your Power”.   Life Coach Simone Kelly-Brown sued Oprah for using the words on Oprah’s magazine saying that she had already been using the words as a slogan.  Unfortunately, like many people, Kelly-Brown did not seem to appreciate how a slogan is considered a trademark and the scope of protection that her trademark registration actually provided.

To be eligible for federal trademark registration, any trademark, including slogans and tag lines must be associated with specific products or services. Many slogans and “catch phrases” are considered “ornamental” or “informational” and thus not registrable. “I’m With Stupid” and “Have a Nice Day!” are generally not protectable by themselves, but “I’ve Fallen and I Can’t Get Up!”, when associated with emergency medical response services, is a protectable, federally registered trademark, US Trademark Registration 3255726.

A slogan must also either be “inherently distinctive” or must have acquired sufficient “secondary meaning” so that people have come to recognize that slogan as indicating a particular company for the goods or services.  Phrases considered inherently distinctive typically include coined words, puns or deliberate misspellings (for example, “Be Cointreuversial” for Cointreau liqueur), or connote some attribute of the product (Coca-Cola’s “The Real Thing” and Nike’s “Just Do It” are among the better known examples).

A slogan that is not inherently distinctive may still be accorded trademark protection if it has acquired “secondary meaning”; that is, through its use over an extended period of time, the phrase has become associated exclusively with the owner’s product or service.  A classic example is “The Greatest Show on Earth.” Most people have come to recognize this slogan as indicative of Ringling Bros.-Barnum & Bailey’s Circus. Although this phrase is a “ laudatory” and “merely descriptive” phrase, registration is granted based on evidence of extensive use in advertising in various media over an extended period of years.

Oftentimes, a non-distinctive trademark is combined with its design elements in the application process as a strategy to enhance the trademark’s claim to distinctiveness in the overall design combination.  Unfortunately, that combination also limits the scope of protection provided by the trademark registration.  That is what seems to have happened in the Oprah case.

Who (If Anyone) Owns “Own Your Power”?

In 2007, Simone Kelly-Brown, a Florida-based life coach and motivational speaker, obtained a federal registration for the phrase “Own Your Power” in connection with workshops and seminars and radio programs dealing with entrepreneurship.  The registration was not for the phrase as standard characters alone, however, but also claimed the fanciful design “light blue scripted letters which create the words Own Your ‘Power.’”   This registration only protected the words combined with the design element.

In 2011, Kelly-Brown sued Winfrey, asserting infringement from Winfrey’s use of the phrase “Own Your Power” in, among other places, her popular “O” magazine and the www.oprah.com website. The evidence showed that Oprah had used only the literal words of Kelly-Brown’s mark and had at no time copied the mark’s design element.

The trial court dismissed Kelly-Brown’s complaint, holding that the words of her mark was not inherently distinctive and that no reasonable jury could conclude that “Own Your Own Power” was associated exclusively with her programs. Kelly-Brown appealed and the appeal was denied.

What The Decision May Mean for You

Although the same basic analytical principles apply to all trademarks, the Oprah case shows that there may be nuances involved when a trademark is a slogan or a catch phrase, and just getting a trademark registration may not get you the protection you really want nor the protection you may think you have. In the Oprah case, Kelly-Brown thought she had protection of her word mark, but really only had protection over the word mark combined with its stylized design.  That limited scope of protection resulted from specific statements made during the trademark application process.

The expert trademark attorneys at Sherman IP specialize in working with you to obtain the maximum scope of protection affordable to you, and helping you to understand the impact of any statements you may make in the trademark application process.