The U.S. Trademark Office recently made headlines when it decided to deny Warner Brothers Entertainment (“Warner Brothers”) the trademark registration for “I solemnly swear that I am up to no good.”  Fans of the J.K. Rowling series Harry Pottermay recognize the phrase as one that Harry uses in the famous book series to access his “Marauder’s Map.”  

Warner Brothers Trademark Slogan Deemed Informational Use Only

Despite Warner Brothers’ argument that fans worldwide would recognize the phrase as being connected to the famous Harry Potter movie series, the U.S. Trademark Office refused to accept the Warner Brothers’ trademark application on the grounds that the Harry Potter phrase did not actually qualify as a trademark.  In fact, phrases in general cannot be registered as trademarks because U.S. trademark law use trademarks as a means of consumer protection.  More specifically, trademarks are marks that should allow consumers to immediately recognize the source from where the goods or services originate.  

In this case, the U.S. Trademark Office stated that the phrase “I solemnly swear that I am up to no good” was, at best, an informational slogan, and at worst, a widely-used phrase that could be connected to a wide variety of different sources, concepts, or even sentiments.

As such, because consumers could be easily confused or not immediately identify the source of goods from the phrase alone, the U.S. Trademark Office denied Warner Brothers’ application to register the mark in a variety of trademark categories that cover various merchandising options.  

Critics Argue Allowing Warner Brothers’ Trademark to Register Would Harm Harry Potter Author

Some legal experts following the application pointed out that the application was submitted by Warner Brothers Entertainment, the company that produced the Harry Potter movies, and not from the author J.K. Rowling herself.  As such, many critics of the Warner Brothers’ trademark application have rightfully noted that if the U.S. Trademark Office had approved the application, it would have barred Rowling herself from lawful use of the phrase if she chose to use it in any sort of markets or channels that overlapped with Warner Brothers.

Many may wonder why a company as large as Warner Brothers with access to significant and sophisticated legal resources would choose to pursue such a course of action when most trademark counsel know that approval of such an application is highly unlikely. The answer most likely lies in the fact that for companies as large and wealthy as Warner Brothers Entertainment, it costs very little money to apply for such a trademark registration.  And on the off chance that the U.S. Trademark Office had approved Warner Brothers’ trademark application, the company would have been able to pursue legal action against a number of other merchandise vendors. 

When is Pursuing Unlikely Trademark Registration Worth the Cost and Effort?

While experienced trademark counsel would generally not advise such futile registration attempts to clients with smaller budgets, this type of strategy is often common for brands that can afford to accept such potential denials and (to them) minimal cost.  Here, despite the Warner Brothers’ trademark registration rejection, Warner Brothers has already produced and sold a wide variety of products and merchandise that carry the famous Harry Potter phrase and will likely be able to continue to do so with relative impunity.  The registration denial by the U.S. Patent and Trademark Office will merely prevent Warner Brothers from pursuing trademark registration rights based legal action against others who use the phrase.

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