Call it what you want to: Taylor Swift isn’t just a music mogul, she’s proven herself as a savvy businesswoman over the years as well. For every hit she’s put out over the decade, a series of trademark applications have followed (175 and counting, to be exact). Using Swift’s USPTO history is not just a fascinating case study business owners can learn from: it’s one that all business owners should learn from.
Lesson 1: If you do not trademark the name of your business, product, service, course, etc, you expose yourself to a gaping hole of liability, and could lose rights to that name.
Sure, when you begin using a name in commerce, you do obtain common law trademark rights. However, you will have to fight a likely expensive legal battle to prove them, and are not guaranteed those rights. On the flip side, someone else may come along and register that name before you. Under the Lanham Act, the holder of a common law trademark proves he or she is the rightful owner of the trademark by:
1. Proving he/she was the first to use the trademark in the market ;
2. The trademark is valid;
3. The other party wanted to confuse customers.
The Plaintiff carries the burden of proof. Additionally, the Plaintiff may be able to take the infringer to court, but only if:
1. He/she can successfully prove the mark is a valid trademark (a distinctive name used in connection with commerce);
2. The infringer lives in another state;
3. The amount of damages in question is greater than $75,000.
Business owners such as Swift understand that; hence, why she is willing to file for what appears to be any and ever trademark she could get, generally speaking.
Lesson 2: There is a tactical advantage to filing a trademark before you release your product/service.
The advantage: the filing process for a trademark takes approximately 6-9 months with the USPTO, from the date of filing, to the date of official registration. If you are planning a surprise launch, and/or know that your business is viable (ie, will still be in business by the end of that time period), you’ll likely want that registration on the date of your launch-particularly if you have “watchful eyes” on your business. Swift clearly understands this, and plays this tactic to her advantage.
For example, here are a few of Swift’s current “1B” (Intent to Use) trademarks working their way through the USPTO, for events that have no yet occurred, products that have not yet launched, etc:
Lesson 3: Sometimes, it is highly strategic to file multiple trademark applications for each class of services, rather than a single application covering multiple classes.
As a trademark attorney, my goal for each and every trademark client that I represent is to “cast the net of protection” as widely as I possibly can, while also leaving as much flexibility for future growth as possible. By this, I mean that any trademark application should cover as many classes as your business provides goods/services under. For example, if you are an event organizer who also sells merchandise, you want to file for that product, as well as that service.
Additionally, a very common question I get is whether or not someone should file a trademark for their business name and logo in the same application. In a word, no. Here’s why.
Swift’s team seemingly agrees with this logic, as demonstrated by certain filings from her “Lover” album release:
By filing in this way, Swift is able to claim rights to the name under the classes filed for, as well as the designs of the album. And while she likely would not face this issue in the same way most entrepreneurs do: if that design ever changed, she wouldn’t need to trash her entire registration for the name, just to make a design alteration. In other words, she creates an increased level of protection for that name while allowing for creative growth and flexibility in the future.
Whether you’re a Swiftie® or not, these three lessons are arguably three of the most important aspects of trademark law that every business owner should be aware of, and Swift proves to be an excellent case study for all.
Inquiring minds, you can find the entire list of Swift’s trademarks here.