Heiress Paris Hilton starred in the “reality” television show The Simple Life with her BFF Nicole Richie from 2003 to 2007. In connection with the hit show, Paris Hilton delivered her famous catch phrase “That’s Hot.” Always the entrepreneur, Ms. Hilton trademarked her famous catch phrase in connection with beverages fit for an heiress—champagne and prosecco. She has not yet obtained a trademark for “That’s Hot” in connection with buffalo chicken wing sauce or potato chips, as Steve Baird noted in his blog post about the saucy trademark chip fight.
Catch phrases are expressions that are usually popularized through repeated use by a real person or fictional character. It is a hotbed for trademark registrations. Donald Trump tried to register as a trademark his famous “You’re Fired” catch phrase from his hit show The Apprentice. But, he later abandoned the registration applications.
Ms. Hilton sued America’s largest greeting card company Hallmark Cards over the use of her name and photo along with her registered trademark, “That’s Hot,” in connection with a parody card, “Paris’s First Day as a Waitress.” The Ninth Circuit recently refused to dismiss Ms. Hilton’s claim. The Ninth Circuit rejected Hallmark Cards’ argument that its depiction of the heiress was protected speech as a matter of law. Hallmark Cards defended its Paris Hilton card stating that a number of its new humor greeting cards are parodies of popular celebrities and politicians.
Hallmark Cards may want to go back in time and design cards with characters from certain old television shows that would be appreciated by those who grew up before iPods and Facebook. Although Flo from Alice’s famous catch phrase “Kiss My Grits” used to be trademarked in connection with aprons and potato chips, these trademarks have since been abandoned. Similarly, Hallmark Cards could design a card with JJ from the television show Good Times and his famous catch phrase “Dy-no-mite” to describe a person celebrating a birthday. Alternatively, Hallmark Cards could look to the movies and construct a card picturing the Governor of California Arnold Schwarzenegger with his famous catch phrase “Hasta La Vista Baby” from the Terminator 2: Judgment Day movie that is currently not trademarked.
Catch phrases often emblazon t-shirts, mugs, and other products—already having consumer recognition. But, businesses should beware that many famous catch phrases (and even not so famous ones) are trademarked and using them could open them up to a trademark infringement lawsuit.