When Famous Phrases Fail to Function as Trademarks: Lessons from MLB’s PLAY BALL Application

When Famous Phrases Fail to Function as Trademarks: Lessons from MLB’s PLAY BALL Application

By Mark Meisner

“Play Ball!”

Few phrases are as deeply woven into the fabric of American sports culture as “Play Ball.” For generations, those two words have signaled the start of a baseball game, marking the moment when anticipation gives way to action. Much like a referee’s whistle before tipoff in basketball, or the puck drop in hockey, the phrase cues the start of competition. Its significance extends beyond the baseball diamond, however. Over time, “Play Ball” has become part of everyday American parlance, used to encourage participation, signal readiness, or announce that it is time to begin.

Given that enduring connection to baseball, many would assume that Major League Baseball (“MLB”) would have little difficulty obtaining trademark protection for the phrase. After all, few organizations are more closely associated with the expression. Yet MLB’s recent effort to register PLAY BALL as a federal trademark illustrates a fundamental principle of trademark law: even the most recognizable phrases may be ineligible for protection when consumers perceive them as conveying a message rather than identifying a single commercial source.

When Recognition Is Not Enough

In 2022, MLB applied to register the Mark PLAY BALL for use in connection with apparel and related merchandise. From a branding standpoint, the filing was understandable. The phrase has been connected to professional baseball for more than a century and enjoys widespread public recognition.

Trademark law, however, requires more than familiarity. To be registrable, a term or phrase must function as a trademark, meaning that consumers must perceive it as identifying and distinguishing the source of goods or services. The fundamental question is not whether consumers recognize the phrase, but whether they view it as a functioning brand.

According to the United States Patent and Trademark Office (“USPTO”), consumers are unlikely to perceive PLAY BALL in that manner. Instead, the Office concluded that the phrase was informational in nature and primarily communicates a message, and therefore fails to function as a trademark.

The Informational Matter Doctrine

The USPTO refused registration under Sections 1, 2, and 45 of the Trademark Act, concluding that PLAY BALL constitutes informational matter rather than a source identifier.

This refusal stems from a well-established principle of trademark law often referred to as the “failure-to-function” doctrine. The doctrine recognizes that certain words, phrases, and slogans are used so commonly by the public that consumers do not view them as trademarks, regardless of how prominently they appear on goods or advertising materials.

The Trademark Trial and Appeal Board (“TTAB”) has repeatedly emphasized this concept. In In re Ocean Tech., Inc., the Board observed that “the more commonly a term or expression is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark.” Likewise, in In re DePorter, the TTAB explained that “[t]erms and expressions that merely convey an informational message are not registrable.”

The USPTO found that PLAY BALL falls squarely within that category. While baseball fans unquestionably associate the phrase with the sport, consumers encounter it in numerous contexts outside of MLB. It is frequently used to encourage participation, signal readiness, or announce the beginning of an activity. Because of that widespread usage in idiomatic fashion, consumers are more likely to perceive the phrase as conveying a familiar message than identifying a single commercial source.

A Difficult Registration Path

MLB’s application also confronted a practical challenge that many trademark applicants encounter: prior examination history.

The USPTO has repeatedly refused applications incorporating the phrase PLAY BALL when used in a manner that merely conveys its ordinary meaning. Although prior refusals are not legally binding on future applications, they often reflect longstanding trademark principles that applicants must overcome with persuasive evidence.

As of this writing, the USPTO has issued a final refusal of MLB’s application. If MLB chooses to continue pursuing registration, it may seek reconsideration or appeal the refusal to the Trademark Trial and Appeal Board (“TTAB”). Regardless of the ultimate outcome, the case highlights the significant burden applicants may face when attempting to claim exclusive rights in commonly used expressions.

Lessons for Brand Owners

The PLAY BALL application illustrates a distinction that trademark owners often overlook: cultural significance does not necessarily translate into trademark significance.

Businesses often gravitate toward slogans that are memorable, familiar, and easy for consumers to understand. While those qualities may make for effective marketing, they can also create trademark challenges. A phrase that is widely used by the public may have difficulty serving the fundamental purpose of a trademark, namely identifying a single source of goods or services.

Before investing substantial resources into a new brand campaign, businesses should evaluate not only whether a slogan resonates with consumers, but also whether the slogan is capable of functioning as a trademark. Expressions that merely convey encouragement, support, celebration, or other commonly understood messages often face heightened scrutiny from examining attorneys at the USPTO.

The PLAY BALL refusal underscores a broader lesson for trademark practitioners and brand owners alike. Some of the most recognizable phrases in the marketplace are difficult to protect precisely because they are so familiar. In trademark law, widespread public recognition may enhance marketing value while simultaneously undermining registrability.

Sometimes, the phrases everyone knows are the hardest ones to own.