Trademark a Slogan: Protecting Your Brand's Catchy Phrases
Are you the proud creator of a catchy, attention-grabbing slogan for your business or product? You’ve put your heart and soul into crafting the perfect phrase that represents your brand. Now, you might be wondering how to trademark a slogan to protect your intellectual property and maintain your unique branding. In this comprehensive guide, we’ll walk you through the process step by step.
What is a Slogan According to the USPTO?
Let’s start with the basics. The United States Patent and Trademark Office (USPTO) defines a slogan as “a brief attention-getting phrase used in advertising or promotion” and “a catch phrase used to advertise a product.” Essentially, it’s that catchy and memorable phrase that instantly connects with your brand and product.
Now, let’s take a look at a few famous examples of brand slogans:
- Nike – “Just Do It”
- McDonald’s – “I’m Lovin’ It”
- Apple – “Think Different”
- Coca-Cola – “Open Happiness”
These slogans are not just words; they are powerful tools in building brand recognition and loyalty.
What Makes a Slogan Registrable?
To trademark a slogan, it needs to meet certain criteria. In essence, “a registrable slogan is one that functions as a trademark or service mark on the Principal or Supplemental Register, including the Principal Register under §2(f).”
So, what’s §2(f)?
Understanding Section §2(f)
Section §2(f) allows you to submit evidence showing that your mark has acquired distinctiveness. In simple terms, it means consumers now directly associate your mark with your goods or services due to extensive use and promotion. Long-term use alone usually isn’t enough.
Acceptable evidence of use and promotion can include advertising materials that showcase your mark, dollar figures spent on promoting it, consumer and dealer statements recognizing your mark as a source identifier, and other forms of evidence indicating consumer recognition.
On the flip side, if your slogan is “generic, merely descriptive,” purely informational, or not used as a mark, the USPTO will refuse registration, i.e., it’s not possible to trademark a slogan that meets those criteria.
However, if your mark contains both registrable and unregistrable elements, the examining attorney may just require a disclaimer for the unregistrable portion and, in that case, you’d be able to trademark a slogan.
Understanding Unitary Matter
Slogans, by their attention-getting nature, are considered unitary matter. In trademark terms, unitary matter is a phrase that qualifies as such only if the whole is more than the sum of its parts. This means that slogans are analyzed as a whole, considering their meaning and commercial impression as a single unit.
Phrases should be evaluated on a case-by-case basis to determine if they create a distinct commercial impression independently of their constituent elements. Factors such as arrangement, placement, use in promotional materials, and presentation to consumers can all affect the overall perception of the phrase.
Determining Whether a Slogan is Unitary
Several factors can help determine whether a slogan is unitary. The way a phrase or slogan is grammatically structured and the punctuation it uses can influence whether it’s seen as unitary. Keep in mind that these factors act as guidelines, not strict rules, and their significance depends on how the mark is perceived overall and its impact on customers.
Verbs indicate actions, conditions, or states of being. The presence of a verb can often link elements, creating continuity in thought or expression, contributing to a unitary impression.
EXAMPLE: TIP YOUR HAT for “hats”
Pairing the phrase “YOUR HAT” with the verb “TIP” makes the mark appear as a single phrase, giving the impression of tipping or touching a hat as a courteous gesture. In this case, there’s no need to disclaim “HAT.”
Prepositions are words or phrases that indicate relationships between words. In the case of slogans, prepositional phrases are typically unified by the preposition, giving the phrase a cohesive, catchphrase-like commercial impression.
EXAMPLE: MANGOES FOR THE EARTH for “fresh mangoes”
The preposition “FOR” links “THE EARTH” with “MANGOES,” showing a clear connection between the words. Since the prepositional phrase tied to “MANGOES” unifies the entire phrase, there’s no need to separate “MANGOES,” and therefore, no disclaimer is necessary.
Now and then, you might come across marks that have unique elements followed by prepositional phrases that are informative or descriptive. In these cases, these prepositional phrases can be separated from the rest of the mark and should be disclaimed. For instance, you might encounter situations like “of” followed by a place name (for example, “of Atlanta”) or “for” followed by a consumer category (like “for children”).
EXAMPLE: ESTEE LAUDER FOR MEN for “cologne”
The phrase “FOR MEN” in “ESTEE LAUDER FOR MEN” appears separable from the rest of the mark and doesn’t create a meaning distinct from the individual parts. So, a disclaimer for “FOR MEN” is necessary.
The use of punctuation, such as question marks, exclamation points, colons, dashes, or periods, can affect the unitary nature of a phrase. When punctuation unites all the words, the mark or phrase as a whole is usually considered unitary.
EXAMPLE: CREATIVE NAILS? for “nail polish”
The good old question mark can indicate a direct question or convey surprise and uncertainty, as the Chicago Manual of Style points out. In this case, the question mark at the end of the phrase melds the terms together, giving them a unified purpose and altering the commercial impression. So, there’s no need to disclaim “NAILS.”
But when you spot punctuation breaking up some of the words, it’s probably a sign that the mark or phrase isn’t considered unitary. This could lead to a need for a disclaimer or even a refusal of the unregistrable elements.
EXAMPLE: GO! PUZZLE for “downloadable computer game software”
An exclamation point typically indicates an emphatic or ironic statement and is often placed at the end of a thought to conclude it. In this case, the exclamation point appears between “GO” and “PUZZLE,” physically and conceptually separating them. While “GO” gains an urgent connotation, “PUZZLE” remains descriptive for the goods, showing that they aren’t connected. As a result, a disclaimer for “PUZZLE” is needed.
While the use of a possessive form alone may not merge wording into a unitary phrase, when combined with other unitary factors, it can contribute to a cohesive, slogan-like impression.
EXAMPLES: BILL’S CARPETS for “retail carpet stores”
Simply using the possessive form “BILL’S” isn’t enough to merge it with “CARPETS” to create a unified whole. Therefore, a disclaimer for “CARPETS” is necessary.
BILL’S IS CARPETS for “retail carpet stores”
While “BILL’S” alone doesn’t merge with “CARPETS,” the inclusion of the verb “IS” unifies all the words, creating a complete thought that works as a single unit and portrays a whimsical state of being. Thus, there’s no need to disclaim “CARPETS.”
Unitary But Unregistrable Slogans
There’s a twist here; even if a slogan is unitary, it might still be unregistrable. If an entire unitary phrase or slogan is generic, descriptive, or purely informational, it remains unregistrable. This is especially true for common laudatory phrases or statements used in the business or trade.
EXAMPLE: THE BEST BEER IN AMERICA is so highly laudatory and descriptive of beer and ale being of a superior quality that it is incapable of acquiring distinctiveness
The Importance of a Comprehensive Trademark Search
Before you even try to trademark a slogan, it’s crucial to conduct a comprehensive trademark search to ensure that your slogan doesn’t conflict with existing trademarks.
A comprehensive trademark search involves a thorough examination of trademark databases and other sources to identify any potential conflicts. This search is a vital first step to determine whether your slogan is available for registration.
Read our Guide to a Comprehensive Trademark Search for further details.
The Trademark Application Process
Assuming your comprehensive trademark search clears your slogan from potential conflicts, you’re ready to move on to the trademark application process. Here’s a simplified overview of what that involves:
- Determine Your Trademark Type: Decide whether you want to register your slogan as a standard character mark or as a stylized design. This choice depends on how you want your slogan to appear in your branding.
- Complete the Application: The appropriate application form is provided by the USPTO. Be sure to include all the required information, including your slogan and any other relevant details.
- Pay the Filing Fee: Submit the necessary filing fee along with your application. The fee can vary, so check the current USPTO fee schedule.
- Trademark Examination: Your application will be reviewed by a USPTO examining attorney. They will assess whether your slogan meets all the necessary requirements for registration.
- Publication: If your application is approved, it will be published in the Official Gazette for opposition. This allows third parties to challenge your registration within a specified period.
- Registration: If no opposition is filed, your slogan will be officially registered as a trademark. Congratulations, your slogan is now protected!
– to trademark a slogan involves careful consideration, including an understanding of what constitutes a registrable slogan, unitary matter, and the importance of a comprehensive trademark search. Once your slogan passes these tests and completes the registration process, it’s officially your intellectual property, protected from infringement. So, go ahead and trademark your memorable catchphrase to safeguard your brand’s identity and unique appeal.