IVAN HOFFMAN, B.A., J.D.
You may frequently see slogans that accompany product and service advertising. If you are a careful observer, you may notice that while the product or service bears a superscripted “R” in a circle, the symbol for a registered trademark, the slogan bears a superscripted “TM” or “SM,” the symbols for claims to trademarks that are not registered. Moreover, you may notice in the disclaimers that accompany advertising using such marks that that disclaimer often distinguishes between “registered trademarks” and “trademarks.” And you may wonder the reason for these differences. [I might add that if you actually wonder about these things and you are not an intellectual property attorney, perhaps you need to get out more often. :-)]
If you have a product or service that you are marketing, protecting your rights to your marks is essential. But you also have to be aware of the limits of such protection so that you can perhaps modify your marketing approach to take advantage of as much protection as you may have.
The United States Patent and Trademark Office (USPTO) has strict regulations regarding whether or not a slogan can become a registered mark. In its simplest format, the difference depends on whether or not the slogan is being used in the same manner as the mark i.e. if it is being used to identify the source of the goods or services or if it is merely “informational” or “generic” or “laudatory” and thus not capable of distinguishing this particular product or service from that of another. For instance, going back to the 1970’s, the slogan “hair color so natural only her hairdresser knows for sure” was held registerable for a hair coloring preparation. On the other hand, slogans such as “Think Green” and “Proudly Made in the USA” were found not to be registerable as being merely informational. In the latter instance, the USPTO rejected registration on the grounds that the slogan was not actually being used to identify the product (electric shavers). Similarly, Carvel Corporation tried to register the slogan “America’s Freshest Ice Cream” but it was rejected on the grounds that it was not capable of distinguishing that manufacturer’s ice cream product from another. In other words, the slogan did not serve to identify the source of the ice cream.
As part of this same requirement, often the slogan is not actually part of the packaging of the product and only appears in advertising for that product. In such an instance, it becomes even more difficult to establish that the slogan is being used as a source identifier.
Additionally, unless the slogan is in itself inherently distinctive and qualifies as a mark in itself, the USPTO requires that the slogan be identified with the product or service so that the consuming public, upon hearing the slogan, relates it to the particular product or service. This requirement means that the slogan has developed what the law refers to as a “secondary meaning.” The best examples of this type of slogan are “Just Do It” (Nike) and “Finger Lickin’ Good (KFC).
However, it is wise to remember that even if a slogan does not rise to the level of being protectable under federal registration guidelines, the law protects such slogans in other ways. There are rights of trademark that are based on “common law” principles and unfair competition and these relate to the issues discussed above regarding secondary meaning. Thus, even if the slogan is not the subject of a federal registration, it can be protectable upon a showing of such secondary meaning.
The United States Copyright office regulations do not allow for copyright registration on “short phrases” and “slogans.” Thus one issue facing slogans as copyrights is their very brevity and thus the marketing factor that mandates that brevity cuts into the legal mandates.
The same law prevents the registration of the registration of “words, phrases, symbols, or designs that identify the source of the goods or services of one party and distinguish them from those of others.” This area of protection is left to the trademark laws.
However, do keep in mind that this article deals with protecting advertising slogans, slogans that are intended to identify a source. To the extent that a slogan can pass the “originality” test and is not intended as such identifier, i.e. is not intended to be used as a trademark, it may be possible to protect it via copyright. In this regard, read “Fair Use: Further, Further Issues.”
In sum, protecting slogans is often a very difficult proposition. However, from the marketing as well as the legal standpoint, the more that such slogans are used in tight connection to a product or service, the more weight such use may carry over time in terms of the trademark registration process. The user of the slogan should keep detailed records and notes as well as copies of all uses of the slogan in order to document claims of “secondary meaning,” both for purposes of federal registration as well as its claims under unfair competition and common law trademark laws.
© 2001 Ivan Hoffman