Taylor Swift recently applied for various US trade marks including This Sick Beat, generating a storm of protest in the process. The famous Ms Swift is one of the most popular country and pop music singers in the US, and indeed the world. The phrase "this sick beat" comes from her recent chart-topping song Shake It Off. Why has she applied for this trade mark, and is she allowed to?
Trade marks can be registered in up to 45 classes of goods and services. A trade mark identifies the source or origin of particular goods or services marketed under the name or brand. In Taylor Swift's case, she has applied for her trade mark in 16 classes including entertainment services (Class 41), clothing (Class 25), handbags (Class 22) and perfume (Class 3). In doing so, Ms Swift is following a well travelled road where actors, singers and other famous people seek to monetise their image and reputation through the sale of goods and services bearing their name, likeness or other association. In this case, the association is the phrase from Ms Swift's recent hit song. Taylor Swift has around 120 US trade marks and applications. Other prolific trade mark filers include Kanye West and Justin Timberlake.
It’s a little unusual to file an application in 16 classes but there is no problem in doing so. In Australia, the application and registration fees for that application would be around $8,000 but of course, Ms Swift can afford that!
You might wonder whether This Sick Beat is a good brand name for a perfume, handbag or T-shirt but she may well succeed with her applications for the reasons outlined below. Whether she succeeds in establishing a profitable business from these trade marks remains to be seen. We have our views and no doubt you have yours.
Regardless of the merits of the particular trade mark, with some important limitations, almost any word or phrase can be registered as a trade mark. In fact, not only words can be registered as a trade mark but also logos, colours, scents, shapes and even sounds are potentially registrable. Particular rules apply to registration of these different types of trade marks but the general principles are essentially the same.
The main requirements for trade mark registration are that the words (logo, colour etc.) must not be descriptive of the goods or services and must be capable of distinguishing the applicant's goods or services. Trade marks serve as a badge of origin or source. Accordingly, anything which is too descriptive, generic or lacking distinctiveness cannot serve as a badge of origin or indicate the source. A registered trade mark owner can stop others using the trade mark in relation to the registered goods or services. It would be unfair to give someone a monopoly over a descriptive, generic or non-distinctive word applying to particular goods or services.
While consisting of ordinary English words, the phrase “This Sick Beat” is not directly descriptive of clothing, handbags or perfume. So her application may well succeed in relation to these items. However, if the phrase is in common usage in relation to music and songs, she might struggle with that part of her application. This is why trade marks such as Sharp, Mars, Apple, Dell and others are possible. They are ordinary English words but they have no particular association with the products for which they have been registered. That association has been built by the trade mark owners on the back of extensive marketing campaigns over many years. Having said that, made up words are much easier to trade mark.
Interestingly, Ms Swift applied for the trade marks in her personal name. We usually recommend that trade mark applications are filed in a company name to take advantage of the liability limitation and business structuring opportunities created by a corporate vehicle. Another benefit for Ms Swift might have been that people would not have realised quite so quickly who was filing the trade marks. If Ms Swift succeeds with her applications and wants to take action against someone for infringement, she will have to personally take the action. It may be that the trade marks will be assigned to a corporate vehicle at a later stage or licensed to someone else who will take the action.
Ms Swift has not yet applied for the trade marks in Australia but potentially she could. In an era when pirating of music is so prevalent, it makes good sense for musicians and others to seek different ways to make money from their talent and fame. It remains to be seen whether this trade mark has what it takes to be a blockbuster brand but she has at least recognized the value of trade marks. The song by Taylor Swift, “Shake It Off”, also includes "Got nothing in my brain. That’s what people say." Taylor Swift's canny business actions suggest there might be more upstairs than others give her credit for. Certainly, her musical talent and well-justified business success are undeniable.