By: Keaton Brown
In early February of 2020, the United States Patent and Trademark Office (USPTO) denied the trademark application of Fox Media for the phrase “OK Boomer”.[1] Back in November 2019, Fox Media filed a trademark application for the phrase in connection with a new reality, comedy game show.[2] The application came just days after Kevin Yen filed an application to trademark the same phrase in connection with certain clothing products.[3] The application by Yen spurred a huge influx in applications for the phrase “Ok Boomer.” The applications were varied and included stickers, clothing, party games, and pens.[4] But can a common phrase like “Ok Boomer” act as a trademark? The USPTO said no and here is why.[5]
A trademark is “any word, name, symbol or device” that a producer uses or will use “to identify and distinguish his or her goods . . . from those manufactured or sold by others to indicate the source of the goods.”[6] This definition creates a distinguishing requirement. To receive trademark protection, the mark must distinguish itself from others and identify the creator of a particular good.[7] Certain marks do not accomplish this requirement because they are slogans or commonplace terms.
Commonplace terms are phrases or words that are used by a variety of sources that merely convey an ordinary or familiar, well-recognized concept of sentiment.[8] If a term is more commonly used, it is less likely to receive protection.[9] A commonplace phrase often fails to properly identify a source and thus, it fails to meet the distinctiveness requirement. Only if a mark obtains secondary meaning can the mark qualify for protection.
The trademark application for “OK Boomer” was denied because the examining attorney found it to be a slogan or widely used term.[10] “OK Boomer” is a relatively new term that implies “repeated retort to the problem of older people who don’t get it, a rallying cry for millions of fed up kids.” [11] Although it has been sparingly used for a few years, the term gained widespread popularity this past fall with the growth of the app TikTok.[12] The song entitled, “OK BOOMER!” by Peter Kuli & Jedwill, became a popular song to sing along to on the app, and the phrase quickly caught on among younger generations.[13] The sudden popularity may explain the sudden increase in trademark applications.[14] The examining attorney cited multiple sources that had already used the term.[15] Several of these sources were television shows or other media segments similar to Fox Media’s potential use.[16]
Similarly, other famous slogans have failed to meet this distinguishing requirement. For example, Lebron James was denied a trademark for the phrase “Taco Tuesday.”[17] Cardi B was also denied when she applied to register the term “Okurrr”[18] Both marks were considered slogans and commonplace terms that did not specifically identify the celebrity.The denial by the Trademark Office was only a nonfinal action. Fox Media now has six months to respond to the action. If Fox Media does not respond to the action, the mark will be considered abandoned. Regardless of Fox Media’s actions moving forward, the term “OK Boomer” will likely not be registerable as a trademark because of its inherent inability to identify a source
[1] Non-Final Office Action to Fox Media LLC dated Feb. 4, 2020, p.1, http://tsdr.uspto.gov/documentviewer?caseId=sn88687936&docId=OOA20200204134155#docIndex=1&page=1.
[2] OK Boomer Application of Fox Media dated Nov. 11, 2019, p.1, http://tsdr.uspto.gov/documentviewer?caseId=sn88687936&docId=RFA20191114082601#docIndex=3&page=; see also K Thor Jensen, Fox Trademarks “OK Boomer,” but can you own a Meme?, Newsweek (Nov. 19, 2019), https://www.newsweek.com/fox-trademark-ok-boomer-meme-1472710 [https://perma.cc/MK2A-LSK9]
[3] OK Boomer Application of Kevin Yen dated Oct. 31, 2019, p. 1, http://tsdr.uspto.gov/documentviewer?caseId=sn88675174&docId=RFA20191104080125#docIndex=3&page=1.
[4] See generally http://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4801:e8o973.1.1 (search in search bar for “OK Boomer”) (Last visited Feb. 15, 2020)
[5] Non-Final Office Action to Fox Media LLC dated Feb. 4, 2020, p.1, http://tsdr.uspto.gov/documentviewer?caseId=sn88687936&docId=OOA20200204134155#docIndex=1&page=1.
[6] 15 U.S.C. § 1127
[7] See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, (1992)
[8] See In re Volvo Cars of N. Am., Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998) (holding DRIVE SAFELY not registrable for automobiles and like parts because the mark is perceived as merely an “everyday, commonplace safety admonition”); In re Remington Prods., Inc., 3 USPQ2d 1714, 1715-16 (TTAB 1987) (holding PROUDLY MADE IN USA not registrable for electric shavers because the mark was merely a common message encouraging the purchase of domestic-made products); TMEP §1202.04(b).
[9] See In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04(b) (stating “[t]he more commonly a [term or expression] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark [or service mark].”).
[10] Non-Final Office Action to Fox Media LLC dated Feb. 4, 2020, p.1, http://tsdr.uspto.gov/documentviewer?caseId=sn88687936&docId=OOA20200204134155#docIndex=1&page=1.
[11] Aja Romano, “OK Boomer” Isn’t Just About the Past. It’s About our Apocalyptic Future, Vox (Nov. 19, 2019), vox.com/2019/11/19/20963757/what-is-ok-boomer-meme-about-meaning-gen-z-millennials [https://perma.cc/7BQV-48DT].
[12] Id.
[13] Id.
[14] Thirteen Applications were filed for the term “OK Boomer.” Nine of those applications were file on or after October 31, 2019. http://tmsearch.uspto.gov/bin/gate.exe?f=searchss&state=4801:e8o973.1.1 (search in search bar for “OK Boomer”) (Last visited Feb. 15, 2020)
[15] Non-Final Office Action to Fox Media LLC dated Feb. 4, 2020, p.1, http://tsdr.uspto.gov/documentviewer?caseId=sn88687936&docId=OOA20200204134155#docIndex=1&page=1.
[16] Id.
[17] Mihir Zaveri, LeBron James Tried to Trademark “Taco Tuesday,” but got Swatted Away, N.Y. Times (Sept. 11, 2019), https://www.nytimes.com/2019/09/11/style/lebron-taco-tuesday-trademark.html [https://perma.cc/SLZ2-GNT2].
Why Fox Media Failed to Trademark the Phrase “OK Boomer”[18] Gil Kaufman, Cardi B’s Attempt to Trademark “Okurrr” Turned Down by U.S. Patent Office, Billboard (July, 2, 2019), https://www.billboard.com/articles/columns/hip-hop/8518263/cardi-b-trademark-okurrr-turned-down-us-patent-office [https://perma.cc/E6SW-M6DY].
