Can you trademark a catch phrase? JOHNSON v. CHERNIN

A trademark is something that a producer of products uses to brand the product is sells in the market place. Traditionally a trademark is thought of as a symbol, word or phrase that is used to distinguish similar products from one another. The association that consumers make between a trademark and the source of a product is the primary measure of the strength of a trademark. When someone brands products using a trademark in a way that causing consumer confusion as to the source of a product, that can be considered trademark infringement.

The owner of a trademark is not required to actually produce the products which bear its trademark. When a trademark owner gives another party permission to use a trademark this is known as licensing. Trademark licensing is a lucrative business for the owners of well respected trademarks. When consumers associate a trademark with quality products, the owner of the trademark can command substantial royalty payments from businesses that want to license the trademark. When a trademark owner licenses their trademark to a third party the have an obligation to exercise quality control over the licensed products. When a trademark licensing agreement lacks adequate quality control, this is known as naked licensing. Naked licensing and failure to exercise adequate quality control over licensed products, such that the trademark is no longer associated with the quality expected by consumers, can lead to a forfeiture of the trademark owner’s claim to the trademark owner. A trademark owner can also loose their rights to a trademark if they allow other people to use the trademark without objection.

Because the strength of a trademark is closely tied to the association a consumer make with a trademark, a trademark owner must carefully police the use of its trademark in the market place. Some trademark infringement lawsuits seem silly to the average person, but sometimes silly lawsuits are necessary to maintain the rights to a trademark.

DAVID JOHNSON, v. THE CHERNIN GROUP, LLC et al, 1:19-cv-02485 (S.D.NY. 2019) is a case which may seem silly on its face, however there are important implications if the trademark owner did not enforce its rights. The plaintiff in this case is David Johnson, a sportscaster whose career focuses on announcing thoroughbred horse races. Anyone who has watched a horse race announced by the plaintiff has heard the phrase “AND DOWN THE STRETCH THEY COME.” as the horses make the final turn towards the finish line. The plaintiff came up with the phrase in the 1960s and has registered it as a trademark. When the plaintiff announces a horse race part of his compensation includes a license for the broadcaster of the horse race to broadcast the phrase. Television networks, radio stations, racetracks and other sports promoters pay a premium for the plaintiff to use the trademarked phrase during sporting events. The plaintiff’s livelihood is closely tied to the association consumers make between the plaintiff’s trademark and a high quality sports event.

The defendant in this case are a group of movie studios that produced a movie entitles St. Vincent. The movie revolves around a dislike-able character, named Vincent, that embodies all the negative stereotypes associated with gambling and horse races. At one point in the movie Vincent yells the phrase “AND DOWN THE STRETCH THEY COME” in a voice which sounds like the plaintiff. The defendants never sought nor were granted a license to use the plaintiff’s trademarked phrase.

The plaintiff sued the defendants for trademark infringement for the unauthorized use of the trademarked phrase. The plaintiff alleges that the defendants were attempting to capitalize off the good will associated with the trademark. Furthermore, the plaintiff alleges that the defendant’s use of the trademark damages the value of the trademark because it is used by an unsavory character.

To the public this dispute may seem silly, however it is important for the plaintiff to protect his trademark or risk losing it. It will be interesting to seem how the court rules on this case, if it ever gets to that point. Similar cases, where a sports announcer’s phrase was used without permission have been settled quickly.

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