The trade mark application in question was filed on 09 June 2017 at the US Patents and Trade Mark Office (USPTO) and covered the following services in Class 41: “Entertainment, namely, live performances by a musical artist; personal appearances by a musical artist”.
Unsurprisingly, the application attracted widespread criticism — not least due to Mr Simmons’ claim that the sign was first used by him on 14 November 1974. This claim does not sit well with those of us who recall John Lennon’s ‘devil horns’ hand gesture on the cover of the Beatles 1966 single ‘Yellow Submarine’; nor anyone familiar with its earlier use in a number of Latin countries, such as Brazil, where the hand gesture is used to rather impolitely indicate that a man is being cheated on by his wife (ele é corno).
It did not take many people long to point out that the hand gesture in question is a rather generic sign used by countless musicians around the world. You don’t need to be an expert in trade mark law to realise that such a sign could never exclusively designate a single individual or business because it is, quite simply, too generic and therefore lacks sufficient distinctive character to function as a trade mark. Mr Simmons, perhaps realising this fact, eventually filed a request to expressly abandon the application on 20 June 2017.
So, is it possible to trade mark a gesture?
The short answer to that question is ‘yes, it is possible’. However, much will depend on how the mark is represented and whether the public perceives the mark as a ‘badge of origin’ for the relevant goods and services. Most gestures are inherently lacking in distinctiveness, as consumers are simply not in the habit of associating them with a particular trade source — for instance, the two finger ‘peace’ gesture.
In some cases, however, it may be possible to educate the public in to associating a gesture with a particular trade source. For example, Mo Farah arguably managed to educate the public to associate his ‘Mobot’ gesture of forming an ‘M’ shape above his head with a single distinct trade source during the London 2012 Olympic Games. It was perhaps for this reason that, back in 2013, he was successful in acquiring a UK trade mark registration for the gesture, covering a wide range of goods in Classes 9, 16, 24, 25 and 28.
The key to successfully registering any mark, whether it’s a word, logo, shape, sound, smell, or gesture, is to demonstrate that the sign is capable of functioning as a trade mark. The more unusual the sign, the more the relevant trade mark registry will require evidence demonstrating that the public are capable of perceiving the sign as being distinctive of one particular trade source.
Mr Simmons’ choice of trade mark was simply too generic to function as a trade mark, since it’s not a sign which is exclusively associated with him or his businesses. On the other hand, Mo Farah’s gesture is not generic (at least in the UK) and the public have been educated to associate it with one of Britain’s most decorated athletes. Thus, in contrast to the ‘devil horns’ gesture, the ‘Mobot’ gesture can be said to act as a badge of origin, as it enables the average consumer to distinguish Mr Farah’s goods from those of other individuals and businesses.