Believe it or not, the holiday shopping season is upon us. It’s that time of year when retailers and manufacturers put their best foot forward to entice the public to shop, shop, shop. It’s also a time of year when brands — trademarks — are on display front and center.
While consumers may dive right into the shopping frenzy, brand owners and other companies need to consider what they can and cannot say from a trademark perspective as they seek to drive sales to their specific goods and services on certain shopping days that have taken on a life of their own.
The High Shopping Days
To identify the biggest global shopping days of the season, retailers designate special names for certain days, e.g., “Black Friday,” “Small Business Saturday,” and “Cyber Monday.” And don’t forget about opening up your wallet for charity on “Giving Tuesday.”
Examples of international shopping days include China’s “Singles Day,” India’s “Great Online Shopping Festival,” and Australia’s “Click Frenzy Day.”
Of course, social media plays a big role in the promotion of these peak shopping days. So we can expect to see not only brands and slogans on display, but also hashtags like #BlackFridaySale in advertisements and on social media channels.
This raises the question of whether one company can claim exclusive rights in a term like “Black Friday” to identify the shopping day. That is, in the United States, can a company claim the phrase as its trademark and stop others from using it? In short, no. When the phrase “Black Friday” is being used to identify the shopping day itself, a company cannot claim exclusive rights.
Trademarks, Brand Names and Simple Phrases
Trademark law recognizes key differences between brand names and phrases like “Black Friday” and “Cyber Monday.” Brand names (or trademarks) identify goods and services as coming from a single source. Consumers rely on, and are entitled to rely on, the trademark as an indicator of the quality they expect from the brand.
So, a specific trademark can identify a wide range of computer hardware and other goods while another may identify retail department store services. “Black Friday” and “Cyber Monday,” when used to describe the day after Thanksgiving and the following Monday, are simply phrases that describe the day, and not source identifiers.
In fact, in the United States, a number of applicants have attempted to register marks that use the phrase “Black Friday” for services closely related to the shopping day, and those applications have been refused because the mark is “merely descriptive” and therefore not registrable. They cannot be “owned” by a single user. Others are entitled to use those phrases to identify their sales on these well-known shopping days.
The ability to own exclusive trademark rights to a word or phrase depends largely on context. While a single user cannot claim exclusive ownership rights in the phrase “Black Friday” for shopping on the day after Thanksgiving, that phrase could potentially be protected for other uses. For example, “Black Friday” might be a perfectly acceptable and protectable trademark for a variety of different goods or services provided that it does not merely describe the goods or services. Common phrases that describe seasons, items, goods, and even special days cannot be owned by anyone when the phrase identifies the generic term for the item or merely describes it. But, use of the same phrase to identify the source of something completely different — “Black Friday” as the name of a brand of clothing, for example — transforms it to a protectable trademark.
What's OK in Your Ads?
How can a retailer know what is fair game in advertising and social media? Many retailers will advertise seasonal deals with a “Black Friday” sale or a website promotion with the #CyberMonday hashtag. Those generic or descriptive uses merely tie the promotion to the day. No one has the exclusive right to use those phrases, by themselves or in a hashtag, to identify the shopping day and the sales normally associated with it.
Retailers also have a fairly broad privilege to use the trademarks of others to signal to customers that they sell genuine merchandise from those other brand owners. For example, a boutique carrying a particular brand of clothing, such as the hypothetical Notebook clothing brand, should be able to advertise its sale with #BlackFridaySale and/or #BuyNotebookClothing. However, a retailer using the #BuyNotebookClothing hashtag merely to drive or divert traffic to its site or store where Notebook clothing is not offered for purchase may find itself in hot water.
So, enjoy the season, and take advantage of “Black Friday,” “Cyber Monday,” and “Giving Tuesday.” But remember, those phrases just identify a day. To hold trademark status, a phrase must be a source identifier for specific goods or services.
Kelly is an attorney based in NYC providing general counseling on corporate matters, contracts, licensing, dispute resolution, trademark, copyright and advertising laws and intellectual property support in mergers, acquisitions and other corporate transactions. Her previous firms include Morgan, Lewis & Bockius, Nixon Peabody, and Foley & Lardner, where she worked extensively with well known brands such as Harley-Davidson, Citi, Hermès and Constellation Brands.
Kelly received her undergraduate degree from the University of Rochester her JD from Emory University School of law.
Ms. Blasco has worked continuously in the intellectual property field for her entire career. She has a wide range of experience in IP and is an international trademark specialist handling many very large international portfolios. She has been an active volunteer with International Trademark Association (INTA) since the early 90’s serving on various INTA committees. She completed her service on the INTA board of directors on December 16, 2016 and also served on the leadership development committee which she chaired from 2012-2013.
Ms. Mitchell’s career spans over 20 years of assisting companies with establishing and preserving value in their brands nationally, internationally, and regionally. She has advised high profile brand owners in the areas of gaming, education, fashion, entertainment and media, manufacturing, food service, banking, medical, pharmaceutical, agriculture, software, technology, textiles, and furniture. She also counsels clients on copyright matters and provides customized client workshops and seminars on various trademark-related topics including choosing effective trademarks, proper use, protection and enforcement basics. Ms. Mitchell is currently in-house Trademark Counsel for Aristocrat Technologies, Inc., a global gaming and systems manufacturer and its social gaming affiliates. Prior to assuming her current role, she worked with the law firm of Womble, Carlyle, Sandridge & Rice for more than 10 years during which she worked on a dedicated basis for GlaxoSmithKline handling a wide range of trademark matters for the company.