Contracts And Poker: Can Casinos Trademark A Phrase?

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If you come up with a phrase like, “Go for the win!” can you get legal protection for it?

In a previous column, we examined some issues that arise under copyright law. Copyright protects literary, artistic, and musical works. While there is no requirement that the work have creative merit, words and phrases are not protected. Copyright law is federal law, and the appropriate regulation states, “The following are examples of works not subject to copyright: … words and short phrases such as names, titles, and slogans.” So your claim to copyright for a short phrase would probably not succeed.

A word or short phrase might, however, be eligible for trademark protection. The point of a trademark or service mark (the former for goods and the latter for services) is to let the public know the source of the goods or services. However, unlike a copyright, a trademark does not arise on creation. As a general rule, you get a trademark by using it, since without use there is no identification with a source. That is why when you order a Coke at a restaurant, the server will sometimes tell you, “We only serve Pepsi products.” If you ordered a Coke and you routinely got a Pepsi, then the word “Coke” would come to stand for any cola drink and not just the one that has its source in the Coca-Cola company.

Some trademarks have been lost when they came to generically describe the product rather than indicating a particular source. For example, “Thermos” has come to mean any insulated storage bottle. You may have noticed that Xerox has campaigns every once in a while telling you not to “xerox” something but to “photocopy” it. If the word xerox comes to stand for any photocopier, the trademark could be lost.

So if you came up with a catchy phrase and you put it on a T-shirt, you would not get trademark protection because it was not associated with the source of any product or service. But if you used the expression when selling a product or service, then it would be entitled to trademark protection if the public came to associate it with that product or service.

For example, Card Player recently reported that one Atlantic City casino is claiming that it has trademark protection for “Go For The Win,” in order to keep another casino from using the similar phrase, “Let’s Go For The Win.”

In order to succeed with its claim, the casino would have to show that it used the mark in interstate commerce (since it is making a claim under federal law) and that the public associated the mark with that casino so that it was confused by another’s use of the similar mark.

I recall one time I thought I would make a great witness to testify in a trademark case because I was confused by two similar marks. I was playing in a poker tournament at a Lucky Lil’s Casino in Butte, Montana. (Eat your heart out!) I walked around outside during a break, and when I went back inside the building, I couldn’t find the poker tables!

I went back outside and looked up at the sign over the entrance. I had walked into a casino called Lucky Lady’s that had very similar lettering and artwork involving a woman’s profile. Curiously, the two were on opposite sides of the same building!

When I researched the matter, I found that both trademarks were owned by the same company. I think what was going on was that Montana had a limit on the number of video poker machines allowed in a single establishment. So by creating two establishments, they could have twice the number of machines in the building. No doubt they welcomed my confusion.

A trademark can have great value and unlike copyrights, which eventually expire, a trademark can continue for as long as it is used. Even before they can read, children can identify the marks of their favorite fast food restaurant and will urge you to stop at that particular place. Similarly, when you see that a tournament is sponsored by WSOP or WPT, you immediately know something about the services available from that particular source. They have communicated a lot in a few letters.

As with copyrights, there are advantages to registering your trademark. While copyright registration is only federal, trademark registration can be either state or federal, so if your product or service is likely to be local, you might consider only state registration. While you are perfectly free to put a C in a circle on the work in which you claim copyright protection, don’t put the R in a circle on the trademark you are using – that symbol means that you have obtained federal trademark registration. You are free, however, to put TM on it to indicate that you are claiming trademark protection.

The third major branch of intellectual property is patents, but I will defer discussion of patent law to my fellow columnist Greg Raymer, who was a patent attorney in a previous life. ♠

Scott J. Burnham is Professor Emeritus at Gonzaga University School of Law in Spokane, Washington. He can be reached at [email protected].