MIP: CAN I TRADE MARK THIS CATCHY HEADLINE?
In June, our team was asked to contribute to a Managing Intellectual Property Magazine feature on trademark protection for slogans/phrases. Our responses were provided alongside responses from seven other practitioners from around the world as part of a global practice feature MIP runs on a monthly basis. Here are our answers, and we encourage you to read the others in the June 2011 edition of MIP here.
1) What law governs how slogans can be registered as trademarks?
In the United States, Federal and State law govern how slogans and phrases can be registered as trademarks. The Lanham Act, 15 U.S.C. §§ 1051, et seq., governs Federal trademark registration. Applicable State statutes vary among the jurisdictions.
2) Can slogans be registered as trademarks in your jurisdiction? What evidence is needed? What other protection is available for slogans that do not qualify as a trademark? (such as unfair competition)
Slogans or phrases (also known as tag-lines) can function and be registered as trademarks in the United States provided they comply with the standard requirements for trademark eligibility. Specifically, the slogan must be a source identifier (capable of identifying and distinguishing the source of the owner’s goods and services from those of others), and not generic or a commonly descriptive term or phrase (i.e., AMERICA'S FRESHEST ICE CREAM for ice cream or CUSTOM-BLENDED for gasoline). In addition, as with regular word and design marks, the owner of a slogan mark must be the first to use the mark.
A merely descriptive slogan can acquire trademark protection upon a showing of secondary meaning, through advertising, survey evidence, or other evidence demonstrating that the public identifies the slogan with particular goods or services for which registration is sought.
The Lanham Act also provides a remedy for unfair competition under Section 43(a) for unregistered trademarks. Copyright protection may be available for longer slogans that possess the requisite minimum originality and creativity, are longer than a single word, and are not common slang or clichéd expressions (such as "Hang in There").
3) What court cases have interpreted this law? (Including relevant examples of challenges that have succeeded and failed)
Slogans are routinely protected and enforced in the United States. A key factor in the ability to protect and enforce a slogan is whether or not the proposed mark is a source identifier for the goods or services for which it is used. The hypothetical slogans "America's Best Ice Cream" for ice cream or "World Famous Pizza" for pizza would not generally qualify for trademark protection as such slogans cannot distinguish the owner’s goods from another company. For example, "America's Freshest Ice Cream" for ice cream was found to be unregistrable by the Trademark Trial and Appeal Board (“Board”) because it was not capable of distinguishing the applicant’s goods. By comparison, "America's Best Chew" for chewing tobacco was found to be registrable by the Board because the generic name of the goods (tobacco) was not part of the slogan.
4) Have individuals and celebrities tried to also register slogans and use for commercial purposes? (If so please give examples)
Celebrities can and often do apply for trademark protection in the United States, including for catchphrases that they have made popular. For example, football star Terrell Owens registered “I Love Me Some Me” for clothing, and American socialite Paris Hilton has a registered trademark for "That's Hot!" for men’s and women’s clothing. Recently, over two dozen new trademark applications have been filed for slogans popularized by actor Charlie Sheen, including “Duh, Winning,” “I am not bi-polar, I am bi-winning,” and “Violent torpedo of truth” for many different goods and services.
5) Have individuals or companies licensed out use of their slogans? (Again, give examples)
Absolutely. Individuals and companies will and do license their slogans for, among other things, merchandising, so as to capitalize on their economic value. For example, restaurant franchisors regularly license their trademarks, including slogans, to their franchisees.
6) How have celebrities dealt with the use of trade marked slogans on social media such as Twitter and Facebook?
While social media has made celebrities more accessible and famous than ever before, celebrities are trying to find the right balance between protecting their various rights and First Amendment free speech concerns.
7) How effective has enforcement been? (Give recommendations and examples)
While in the United States, trademark rights accrue based on use in commerce, a registered trademark – in particular, a federally registered trademark – affords greater trademark protection as it comes with various presumptions, including a presumption of validity and of registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark in commerce for the goods or services specified in the certificate of registration. 15 U.S.C. § 1057(b).
8) What overall advice would you have for attempting to use and protect a slogan in your jurisdiction? (include general advice on enforcement)
Slogan marks are no different than word and design marks in the United States. The slogan must be capable of functioning as a source identifier and must not already be in use by a third-party. If an individual or company is interested in protecting its slogan, the first step is to begin using the mark in commerce. The second step is to seek a Federal registration which will confer nationwide rights. The applicant should be careful to specify only those goods or services for which the applicant is using or has a bona fide intent to use the slogan. Finally, trademark rights in the United States are based on continuous and exclusive use. Therefore, a trademark owner must be vigilant in using its mark and enforcing its rights. Use it, enforce it, or lose it!(TM)