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The Donald and the Trademark, "You're Fired"

An independent retailer battles a giant.

By Eva-Marie Boyd (April, 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. Will Donald Trump get the trademark "You�re Fired" � the catch phrase on his highly rated TV show "The Apprentice"?

A. In my opinion his chances are strong.

I researched the trademark records and found many details that fascinated me. There were nine filings for that name between March 19 and February 3, 2004. These, by the way, were the first-ever filings for that name.

There are various types of trademark filings. Pertinent here are the Intent to Use Filing, and Used in Commerce since�.. filing. All of the filings were Intent to Use, which means you are starting with or contemplating a venture and want to reserve, as it were, that name. Three of the filings came in on the same day (March 19). Donald�s was the first � February 3. I also noted that he filed as an individual and not a corporation.

All things being equal, it is first come first served on the Intent to Use.

The class of goods or services that you are trying to reserve is also extremely important. There were filings for clothing, one for wine and spirits, one for soap and other cleaning products, and one that was filed by an individual who should have used an attorney � he or she clearly did not know what they were doing, I believe that filing will be rejected.

Donald filed in two classes, Games & Playthings and Casino Services. Therefore, since Donald is the first in line and the goods are not the same as any of the other seekers of the name, I believe he will prevail.

(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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