NY Street Artist Claims Common Law Trademark on Apple's 'Powerful' Tag

New York City street artist James De La Vega has sent a Cease & Desist (C&D) letter to Apple demanding the company stop using the phrase "You're more powerful than you think" in its advertising without permission from him. Mr. De La Vega has used that phrase in a series of works called "Become Your Dream," and is claiming what is called a common law trademark for the phrase.

James De La Vega

James De Le Vega
Credit: Wikimedia Commons

Apple used the phrase in its Powerful commercial (shown in full below the fold), an ad showing people using their iPhone 5s devices to tune instruments, model amps, mix monitors on stage, play cellos, control stage lightning, play games, film their kids, film a street band, take photographs, measure their heart rate, set off rockets, and teach astronomy.

Powerful

Screenshot of Powerful Ad
Source: Apple

Mr. De La Vega has been using the phrase in series of chalk and other street art intended to be inspirational. His C&D said that Apple's use of the phrase, "clearly misleads customers into believing De La Vega somehow supports, approves and/or endorses its products." He also said that it “contradicts and undermines" his own inspirational message.

"I have a whole series of quotes," Mr. De La Vega told The Daily News, which broke the story. "They’re all intended to inspire, uplift and empower human beings. These guys were well aware of that when they decided to use it as a way to motivate their base to buy their phones."

The artist believes Apple should pay him for use of the phrase, and he said, "Words are weapons. This is my way of building a movement. (Apple) should pay me because I created it and they’ve used it to create national excitement about a product and huge profits for themselves."

Mr. De La Vega also claimed that the phrase is associated with him, and that a company called Quotable Cards Inc. contacted him for permission to use the phrase on a series magnets featuring quotable phrases.

The basis of his claim is common law trademark, which is effectively an unofficial trademark on a word or phrase, even if you haven't filed for federal registration for that mark.

The Business Journal noted that the U.S. Patent and Trademark Office's FAQ on trademarks stipulates that, "Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application."

That means Mr. De La Vega might well have a case.

Apple's full ad: