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The Donald and the Trademark, "You're Fired" Pt. II

Another David and Goliath?

By Eva-Marie Boyd (May, 2004)

(Note: Eva-Marie has been a practicing attorney for approximately 15 years. During that time she has been President of the Orange County Barristers, President of her law school alumni association, served on the Orange County Bar Association Board of Directors for seven years and as chair of the Orange County Bar Association Legal Referral Committee for three years. She was a panel attorney for California Lawyer for the Arts and has lectured for that organization on copyright issues.)

CNN reported recently about the legal hassle between Donald Trump and an independent ceramic shop. The Donald is attempting to trademark the phrase, "Your Fired" made famous by his TV show, The Apprentice, so he can sell T-shirts and other products. The only problem is, the ceramic shop, in business for years, is named You're Fired, and it already sells T-shirts with the slogan.

Q. What are the chances of this independent ceramic shop prevailing?

A. In my opinion, against Donald, the chances are slim.

In the last column, based on my research of the current Federal Trademark Registry, I espoused that I believed the chances were strong that Donald would receive his mark.

As for the retailer who has been using the name "You’re Fired" for many years and has been selling T-shirts bearing that slogan: my research indicates that there is no pending or filed registration for that name by the retailer at issue.

However, another reporter has opined "Trump's toughest competition may be a little-known Michigan entrepreneur who never applied for a federal trademark. As the owner of You're Fired, Inc., Sallyjo Levine's small ceramics studio boasts sales all over the country and features an online store where visitors can buy You're Fired coffee mugs, T-shirts, boxer shorts, baseball caps and tote bags."

How could Sallyjo possibly beat The Donald? In short, it is because her company has marketed the phrase for years. This means that, even without federal trademark registration, Sallyjo has the exclusive right to use this "common law" trademark.

I believe the reporter erred when he stated the retailer has the exclusive right to use the mark "You’re Fired." She conceivably has the right to use the name for the goods on which she is currently using the name, and secondly if she suddenly starts using the name on a plethora of other goods; a name must be used for at least five years to even qualify for common law consideration, and proving common law is a long, winding, and expensive road.

None of the above, however, in my opinion, will affect Donald since he filed not for the name of a store, for mugs, T-shirts, etc – but for gaming and casino services.

(Note: Have any questions regarding copyrights, trademarks, or other business-related legal issues? Your name will not be used. Mail, fax, or email your questions to Eva-Marie Boyd, 1160 Catalina St., Laguna Beach, CA 92651; fax 949-497-3148; email lawddaw@aol.com. To read previous Legal Q. & A. columns, click on the titles in the right-hand column.)

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