Trademark Registration for Business Slogans

One of the most common areas of inquiry in the intellectual property field of law is how to obtain federal registration for a business slogan. While it is possible to register a business slogan as a trademark, there are certain parameters that apply. The best practice is to be aware of these parameters—and to incorporate them into the creation and design of a business slogan from day one—in order to avoid adopting options that cannot be registered and, in choosing a registrable slogan, facilitate the most efficient registration process possible.

What is a Slogan?

A slogan is a type of phrase defined as “a brief attention-getting phrase used in advertising or promotion” and “a catchphrase used to advertise a product.” See TMEP § 1213.05(B)(i), citing Merriam-Webster.com and Webster’s New World College Dictionary (4th ed. 2010). See also J. Thomas McCarthy, 1 McCarthy on Trademarks and Unfair Competition § 7:19 (5th ed. 2019). Slogans are often paired with an existing company mark or product mark (think, “Have a COKE and a smile”). If your business regularly uses a slogan in its ad campaign, obtaining federal registration can keep others from using your creative catchphrase and can also help your business—or house mark—stand out.

Requirements for Trademark Registration

In order to be registered with the United States Patent and Trademark Office (USPTO) as a federal trademark, a slogan must be one that is used in a trademark sense and functions as a trademark or service mark. TMEP § 1213.05(B)(i). In other words, slogans are registrable in the United States if they are “capable of trademark significance” and “used in such a way as to identify and distinguish the seller’s goods and services from those of others.” McCarthy, supra, § 7:20. On the other end of the spectrum, if a mark consists entirely of a slogan that is generic, merely descriptive, merely informational, or that is otherwise not being used as a trademark, registration will be refused. TMEP § 1213.05(B)(i), citing In re Carvel Corp., 223 U.S.P.Q. 65 (TTAB 1984)(holding AMERICA’S FRESHEST ICE CREAM for flavored ices, ice cream, etc. was incapable of distinguishing applicant’s goods and therefore unregistrable); In re Wakefern Food Corp., 222 U.S.P.Q. 76 (TTAB 1984)(holding WHY PAY MORE for supermarket services to be unregistrable as a common commercial phrase). Additionally, slogans are treated as unitary matter and must not be broken up for the purposes of requiring a disclaimer. This means that if any part of a slogan is unregistrable, the entire slogan must be disclaimed.

Types of Registrable Slogans

Federal registration is possible for inherently distinctive slogans or descriptive slogans that have acquired secondary meaning (meaning the slogan has come to be associated with a single commercial source in the minds of consumers). Examples of such marks include AMERICA RUNS ON DUNKIN’ (Dunkin Donuts, U.S. Reg. No. 5417464), SAVE MONEY. LIVE BETTER (Walmart, U.S. Reg. No. 4465793), and I’M LOVIN’ IT (McDonald’s, U.S. Reg. No. 2978887). Descriptive slogans that can (but have not yet) developed secondary meaning may be registered on the Supplemental Register if the mark is in use or the application is based on a foreign registration. Registration on the Principal Register may be obtained later, once secondary meaning has been established (usually through more than five years’ use and/or large amounts spent in advertising and marketing).

Challenges in Slogan Registration

In recent years, the USPTO appears to have adopted a narrower view of what constitutes an inherently distinctive slogan, resulting in an increase of refusals to register slogan marks. The types of slogan marks typically refused registration are those that (1) convey general information about the goods or services; or (2) are merely descriptive of the goods or services.

Conveying General Information

• Merely Informational Matter: Applications for trademark registrations are routinely rejected when a slogan does not function to indicate source because it conveys information about the goods or services (“100% Cotton”). The USPTO has further refined this “general information” category of unregistrable slogans to include those that consist of “merely informational matter.” These are slogans that convey an informational message and are perceived by the public in a way that can never function as a trademark. Whether a proposed slogan is “merely informational” is determined by a focus on the applicant’s websites and social media pages and those of any competitors, among other sources. Since a “merely informational” slogan is similar to a generic trademark in that it is not capable of acquiring secondary meaning as a source indicator, it can never become a trademark and cannot even be placed on the Supplemental Register. Examples of slogans refused registration as “merely informational matter” are FRAGILE (informing consumers of the fragility of the item to which it is attached), GUARANTEED STARTING (for motor vehicle services), and HOURS OF ENERGY NOW (for an energy drink). An important tip is to consider how the slogan will be used—on a company website, in advertising or marketing—and whether that use (which will need to be submitted to the USPTO as part of the registration process) is merely conveying information about the goods or services rather than pointing to the source of those goods or services.

• Commonly Used Phrases / Common Social, Religious, Political Messages: In the same way, slogans that consist of commonly used phrases, or their derivatives, or that offer social, political, religious, or other common messages are often refused registration. Such refusals usually are based on the conclusion that the slogan fails to function as a trademark; in other words, the point of the slogan is the social, religious, or political message rather than identifying the source of specific goods and services. “When confronted with so many similar uses of a term to convey essentially the same concept or sentiment, consumers will perceive the term as a common message rather than a source identifier.” See In re Texas With Love, LLC, Serial No. 87/793,802 (Oct. 29, 2020). Widespread use of a phrase may be enough to render it incapable of serving as a source indicator. BLACK LIVES MATTER, THINK GREEN, OCCUPY WALLSTREET, ONCE A MARINE, ALWAYS A MARINE, and EYE FOR AN EYE were all refused registration on this basis.

  Even if an applied-for slogan gets past the Examiner’s evaluation and proceeds to publication, opposition or cancellation proceedings with the Trademark Trial and Appeal Board (TTAB) can also be asserted on this basis. In United States Soccer Federation, Inc. v. Aztec Shops, Ltd., Opposition No. 91220225 (Jan. 28, 2017) (not precedential), the US Soccer Federation opposed registration of the mark I BELIEVE THAT WE WILL WIN for clothing items. The applicant maintained the slogan was associated with San Diego State University based on substantial sales and advertising, but the TTAB disagreed. Because it held that the phrase had commonly been used by others to convey support or enthusiasm for various sports teams and political causes, the TTAB held the phrase unregistrable. The bottom line is this: the more common the phrase, the more likely it will be refused registration.

• Merely Laudatory Phrases: A slogan that consists of a laudatory phrase is also likely to be refused registration. There appears to be some debate as to whether laudatory phrases are “merely informational matter” that can never function as a trademark and, thus, cannot be registered or whether such phrases are more akin to a descriptive slogan or mark that can be registered if it obtains secondary meaning. Regardless of the category, slogans that tout the superiority or high quality of goods and services are likely unregistrable. As a general rule, it is best to avoid including terms like “best” or “greatest” in a slogan if federal registration is the intent. Examples of slogans refused registration as merely laudatory are THE GREATEST BAR (for restaurant and bar services), WORLD’S BEST DOWN (for pillows, comforters, etc.), and THE BEST BEER IN AMERICA (for beer).

Descriptive Marks

• Merely Descriptive: As with slogans deemed to include “merely informational matter,” slogan applications are commonly refused by the USPTO when they are merely descriptive of the goods and services (“refreshing” for beer) and have not acquired distinctiveness through use, called “secondary meaning.” A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); TMEP §1209.01(b). It is enough if the term describes only one significant function, attribute, or property. In re Oppedahl, 373 F.3d at 1173, 71 USPQ2d at 1371; TMEP §1209.01(b).

  This can be a significant problem for businesses who have not considered the legal implications at the beginning of the creative process; in fact, those in charge of marketing or advertising often prefer the more descriptive slogan because there is little explanation necessary for the consumer to understand what the good or service is. Yet, these are the very types of slogans refused federal registration with the USPTO—marks like YOU’VE GOT MAIL for AOL and DRIVE SAFELY for Volvo were rejected on this basis. The best slogans are suggestive of the corresponding goods or services and require some measure of creativity beyond merely describing the goods or services outright.

Conclusion

A catchy, creative slogan can be a powerful promotional weapon for businesses. And federal trademark registration of a company slogan can be a valuable asset—both in preserving the commercial impression of a given slogan and in ensuring others do not infringe on a slogan to benefit from any goodwill a business has built in the mark. Yet, there can be no doubt that navigating federal registration can be tricky, particularly since those characteristics that may make a slogan appealing from a marketing or advertising perspective may make it more difficult to obtain a federal trademark registration. Companies can minimize these challenges by ensuring IP counsel is involved in the selection process from day one. Those who understand the nature of common refusals issued by the USPTO are more equipped to balance the need for consumer recognition with the need to avoid a merely informational or descriptive mark that cannot obtain federal registration.

Ensuring someone knowledgeable in the area of IP is involved in the creative process can help (1) eliminate from consideration any marks that could be deemed merely informational or merely descriptive; (2) highlight those phrases that are more suggestive and, therefore, more likely to obtain registration; (3) conduct trademark searches of any proposed slogans to see how similar slogans have fared in the USPTO; and (4) craft the USPTO application and any use of the slogan in a way to increase the chances of obtaining federal registration.

For more information about trademark registration and trademark protection, see our trademark services practice page.

Klemchuk PLLC is a leading IP law firm based in Dallas, Texas, focusing on litigation, anti-counterfeiting, trademarks, patents, and business law. Our experienced attorneys assist clients in safeguarding innovation and expanding market share through strategic investments in intellectual property.

This article is provided for informational purposes only and does not constitute legal advice. For guidance on specific legal matters under federal, state, or local laws, please consult with our IP Lawyers.

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