Recently, some news outlets have tried to register “Fake News” as a trademark, to prevent President Trump from using it to describe media outlets.
Regardless of your political leanings, it is an interesting thought experiment to determine whether it would actually be a valid trademark.
A trademark is used to distinguish a particular product or service. It is essentially the “brand.” If a trademark is valid, it prevents other people from using it without permission. That protection protects the goodwill built up for the product/service represented by the trademark. For example, if someone were to sell a facial tissue and call it “Kleenex”, you better believe that the real Kleenex will be bringing a lawsuit. In that regard, the news outlets hope to be able to sue anyone who uses the term “Fake News” to identify news reporting.
However, in order to have a valid trademark, certain requirements must be met. In particular, the trademark cannot be “generic” (i.e. you cannot product the brand “Beer” for beer products). If a trademark is “descriptive” (i.e. “Cleans Your Clothes” for laundry detergent), you can only receive protection if it has been used and marketed so much that people come to associate that trademark with the particular product / service. A good example of that is “Discount Tire.” It describes what they do (sell tires at discounted prices), but if you tell someone you are going to Discount Tire they will know exactly what store you mean.
With all that in mind, the attempts to register “Fake News” as a trademark should fail for several different reasons. Here are a couple of them:
(1) Not a Product / Service:
Perhaps one of the first reasons is that it is not associated with a particular product or service. There are no news organizations that are actively marketing their service as “Fake News.” As a result, it should fail on that initial level since it is not really being used as a trademark.
(2) It is Generic/Descriptive:
An argument can likely be made that the term “Fake News” is generic, in that it does not refer to a particular product but refers to a class of products (news which is not true). However, even if it were not considered generic, it should fail because it is descriptive. The term “fake news” describes a particular type of news. It leaves nothing to the imagination – when you hear the term (even if you have never heard it before), you know exactly what it is referring to.
In order to overcome and still obtain a valid trademark after a finding that it is a descriptive mark, the news organizations would have to prove that it has achieved “secondary meaning.” In other words, they would have to show that when people hear “Fake News” they associate it with a particular product / service and not just that general type of news.
This is probably the largest hurdle to overcome. Since Pres. Trump has been using the term for a while, and no news organization has been officially using it to describe their product or service, it would be very hard to prove that people associate that term with exclusively one product/service.
If you have a business and are looking to protect your trademark, contact the experienced attorneys at Goosmann Law Firm, PLC, in our Omaha, Sioux City, or Sioux Falls offices.
 Technically, a “service mark” is used related to services provided. However, in the law they treated similarly, so we will use the common parlance of “trademark” in this article to denote either a trademark or service mark.