CAN YOU PROTECT YOUR SLOGAN/TAGLINE FROM TRADEMARK INFRINGEMENT?

Marketing captures the minds of buyers. Trademarks identify the purveyor of the goods or services. Slogans or taglines are the result of marketing intersecting with trademarks. Some of the more recognizable ones are – JUST DO IT by Nike, I’M LOVIN IT by McDonalds, or LIVE MÁS by Taco Bell. The US Trademark Act defines a trademark as including “any word”. The US Trademark Office says that: “[a] slogan is a type of phrase and is defined as ‘a brief attention-getting phrase used in advertising or promotion’ and ‘a catch phrase used to advertise a product.’” Based on the above, the ability to protect slogans or taglines from trademark infringement seems straight forward. But companies still stumble when seeking trademark protection of, or taking steps to stop infringement of, a slogan or tagline. One stumbling block – and perhaps the biggest block - is that the slogan must function as a trademark – it identifies the source of goods or services.

The US Trademark Office says that this question is answered by the question of “how the proposed mark would be perceived by the relevant public.” Therefore, according to the Trademark Office, “[t]he more commonly a phrase is used in everyday parlance, the less likely the public will use it to identify only one source and the less likely the phrase will be recognized by purchasers as a trademark or service mark.” In other words, “if

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consumers are accustomed to seeing a slogan used in connection with goods/services from many different sources, it is likely that consumers would not view the slogan as a source identifier for such goods/services.” Thus, slogans that are “merely informational” or “common laudatory phrases” are not protectable. For example, slogans such as CLOTHING FACTS, DRIVE SAFELY, THINK GREEN, PROUDLY MADE IN USA, and AMERICA’S FRESHEST ICE CREAM, and WHY PAY MORE have been found to not be protectable. On the other hand, and even though arguably informational, slogans such as HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE and QUALITY THROUGH CRAFTSMANSHIP have been found to be protectable. Slogans that primarily convey a message are not protectable and viewed by the Trademark Office as ornamentation, not as a trademark. These slogans are often found on t-shirts. Some examples include YOU ARE SPECIAL TODAY and DAMN I’M GOOD. Another type of slogan that is not protectable are those that are merely descriptive. The Trademark Office states that a mark (i.e., slogan) is merely descriptive if it “describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services.” Further, whether a mark is merely descriptive is determined “in relation to the goods or services for which registration is sought, not in the abstract.” Some examples of non-protectable marks include SNAP SIMPLY SAFER, THE ULTIMATE BIKE RACK, BED & BREAKFAST REGISTRY and MAJOR LEAGUE UMPIRE. COMMENT: What this means is that one can obtain trademark protection for a slogan or tagline. One can also stop trademark infringement of a slogan or tagline. However, whether the owner of a slogan or the potential infringer of a slogan, the ability to enforce trademark rights or defend against claims of infringement depends on whether the slogan or tagline is a protectable

Page 2 of 3 © Michael A. Shimokaji, 2015 The contents of this article represent the opinions of the author and not those of the author’s law firm or clients.

trademark. And whether the slogan or tagline is protectable depends on a body of trademark law that applies to all trademarks – slogans and taglines are not a separate category of protectable trademarks for which different rules apply.

Page 3 of 3 © Michael A. Shimokaji, 2015 The contents of this article represent the opinions of the author and not those of the author’s law firm or clients.