When Oprah chants,“Own Your Power,” the screaming crowd of adoring fans feel empowered. Picture Tom Cruise jumping on the sofa completely owning his power.

However the phrase had Simone Kelly-Brown, a motivational speaker, business coach, and owner of the company Own Your Power Communications Inc feeling a different way.

Kelly-Brown registered a ‘design mark’ for ‘Own Your Power’ in a stylised light-blue script with the U.S. Patent and Trademark Office in May 2008 and claimed that Oprah cannot use the phrase in her namesake magazine, social events, television, websites and social media.

However, the Appeals Court decided in favour of Oprah Winfrey and let’s learn why.

Why ‘Own Your Power’ couldn’t be trademarked?

There were three grounds that supported Oprah’s use of the phrase:

1. ‘Own Your Power’ is ‘not distinctive’ enough

‘Own Your Power’ standing alone was not held to be distinctive and lacked independent protection. The phrase was considered to be ‘descriptive’, ‘suggestive’ and ‘arbitrary or fanciful’ and incapable of having any secondary meaning.

2. The phrase did not create any likelihood of confusion

There was no evidence that could be shown to prove that the phrase ‘own your power’ created any confusion. For this purpose, there cannot be a ‘possibility of confusion’ but a proved ‘probability of confusion’ which Simone Kelly-Brown and her legal team could not prove.

3. The trademark protection was for the composite mark and not the phrase

A composite mark is a trademark that consists of both a word or slogan and a design or logo. In this case, the composite mark combined with design elements could have been protected but not the phrase per se as the phrase was merely descriptive of the products of the business.

The outcome may have some implications for Australia. What do you do if you have an award-winning phrase that you have just coined?

Can I trademark a phrase?

Yes, you can! To quote a phrase from the 2008 Obama campaign – In the US, if you are able to show distinctiveness and no creation of confusion, you can trademark a phrase. Although most countries have similar systems for registration and enforcement of trademarks, there are a few differences.

For example – In Australia, there is no requirement to show a ‘likelihood of confusion’ to prove infringement of a trademark which also explains why Australian practitioners generally draft broader specifications of goods and services for which a trademark application is made as opposed to their US counterparts.

Find out if you can trademark a phrase with LawPath’s helpful guide.

Looking to trademark a phrase? LawPath can arrange a fixed price quote to connect you with a trademark attorney who can provide you expert guidance to assist with your trademark registration.

Let us know your thoughts on registering a phrase as a trademark by tagging us #lawpath or @lawpath.

Nishita John

Nishita is a paralegal at LawPath working in our content team, which works to provide free legal guides to enhance public access to legal resources. With an Investment Banking background and a keen interest in Corporate and Commercial Law, her research focuses on small and medium businesses, and how to simplify complex legal procedures