U.S. Trademark Protection For Slogans, Catchphrases & Tag Lines
By Justin M. Jacobson, Esq.
Trademark law grants the owner of a particular mark the exclusive right to use a mark to differentiate the goods or services provided by them from those provided by another business or individual. It functions as an identifier of the source of a particular good or service to the consuming public and as an indicator of the quality of the goods or services provided. Trademark protection in the United States is available for a word, logo, design, hashtag, smell, color, sound, slogan, catch-phrase, “tag line” or a combination of these, which are used in relation to specific goods or services. A further in-depth examination of basic U.S. trademark law is available here. A look at the differences in protection available on the Principal and Supplemental Registries as well as information on trademark renewals in the U.S. is also available.
Similar to a party applying for trademark protection in a “hashtag” and any other word mark, protection is available in the United States for a slogan or other “tag line” used in commerce by a particular mark owner. A “slogan” is defined by Merriam-Webster as “a brief attention-getting phrase used in advertising or promotion.” A “registrable slogan is one that is used [… to function] as a trademark or service mark on the Principal or Supplemental Register” (TMEP § 1213.05(b)(i)). However, a “mark [that] consists entirely of a slogan that is generic, merely descriptive, merely informational [… may] be refused, such as “WHY PAY MORE!” for supermarket services which was refused because it was a “common commercial phrase” (TMEP § 1213.05(b)(i)). This means that taglines and slogans are subject to the same scrutiny as traditional trademarks when they are being examined by the U.S. Patent and Trademark Office (U.S.P.T.O.). Therefore, to obtain rights in a slogan, a mark owner should engage in continuous and extensive nation-wide use of it. This use can occur through including the slogan or tag line in a company’s advertising materials, on their websites and social media platforms as well as on their marketing and promotional materials used to sell goods or services to the public. In this context, an advertising campaign that spans several years assists in potentially protecting a slogan. For example, fast-food restaurant chain, McDonald’s owns a variety of registrations for “I’m Lovin’ it” in many classes, including “restaurant services” (U.S. Reg. No. 2,978,887), “soft drinks” and other beverage items (U.S. Reg. No. 3,104,640), “edible sandwiches” and other food items (U.S. Reg. No. 2,978,889). In addition, sports apparel company Nike has registrations for its tag line, “Just do it” for various goods including “sunglasses” (U.S. Reg. No. 4,350,316), “cell phone cases” (U.S. Reg. No. 4,704,671), “footwear” and “backpacks” (U.S. Reg. No. 4,764,071), as well as for “bottles” (U.S. Reg. No. 4,902,036).
As defined by Merriam-Webster, a “catchphrase” is “a word or expression that is used repeatedly and conveniently to represent or characterize a person, group, idea, or point of view.” This is an expression that has become popular through the continuous and repeated use of the phrase by a real person or fictional character. This means that a catchphrase can only be trademarked if it is used in commerce in connection with a particular product or service. One example of a protected catchphrase is boxing announcer Michael Buffer’s “Let’s Get Ready to Rumble.” This catchphrase has been registered for “coffee mugs” and various items of clothing (U.S. Reg. No. 2,166,194) as this catchphrase is included on these items as well as for “advertising and promoting the goods and services of others” and “entertainment in the nature of a live announcer and in the nature of pre-recorded announcements” (U.S. Reg. No. 2,405,492). Another example is the protection of celebrity chef Emeril Lagasse’s catchphrase “BAM!,” which has received protection for “cookware” (U.S. Reg. No. 2,951,944) as well as for “frozen pre-packaged entrees” and “pasta sauce” (U.S. Reg. No. 46,75,484). Overall, it is important for individuals and business owners to be aware of the potential brand protection available for any slogans, taglines or catchphrases utilized in marketing their goods or services. As explained above, in situations where a party is using a slogan when marketing or otherwise promoting their product, it is prudent to protect it; especially, if it is a unique one that the party intends to utilize as part of their business activities going forward.
This article is not intended as legal advice, as an attorney specializing in the field should be consulted.
© 2019 The Jacobson Firm, P.C.