| Wise
Words is a growing collection of contributed articles,
by an impressive assortment of experts, gurus and
ad biggies, that are germane to our subject.
|
| SHOULD WE CALL YOU NOW? |
| If
you have an article that
belongs in Wise Words, contact
Timothy R V Foster in London
on 44 (0)208 763 2225
or fax him on 44 (0) 208 763 2011
e-mail:  >
|
|
|
|
|
AdSlogans.com -- Wise Words/18
|
From
US Attorney
Ivan Hoffman, B.A., J.D.
Comes expert commentary on
Protecting Slogans
This
article is based on United States law. The law may
be
different in your country and you should consult with
an
experienced attorney in your country familiar with
these issues.
|
| Protecting Slogans
by Ivan Hoffman, B.A., J.D. |
| You
may frequently see slogans that accompany product
and service advertising. If you are a careful observer,
you may notice that while the product or service
bears a superscripted ™Rå in a circle®, the
symbol for a registered trademark, the slogan
bears a superscripted ™TMå or ™SM,å the symbols
for claims to trademarks that are not registered.
Moreover, you may notice in the disclaimers that
accompany advertising using such marks that that
disclaimer often distinguishes between ™registered
trademarkså and ™trademarks.å |
And
you may wonder the reason for these differences.
If you have a product or service that you are marketing,
protecting your rights to your marks is essential.
But you also have to be aware of the limits of such
protection so that you can perhaps modify your marketing
approach to take advantage of as much protection
as you may have.
|
The United States Patent
and Trademark Office (USPTO) has strict regulations
regarding whether or not a slogan can become a registered
mark. In its simplest format, the difference depends
on whether or not the slogan is being used in the
same manner as the mark i.e. if it is being used to
identify the source of the goods or services or if
it is merely ™informationalå or ™genericå or ™laudatoryå
and thus not capable of distinguishing this particular
product or service from that of another.
For instance, going back to the 1970's, the slogan
“hair color so natural only her hairdresser
knows for sure” was held registerable for a
hair coloring preparation. On the other hand, slogans
such as “Think Green” and “Proudly
Made in the USA” were found not to be registerable
as being merely informational. In the latter instance,
the USPTO rejected registration on the grounds that
the slogan was not actually being used to identify
the product (electric shavers). Similarly, Carvel
Corporation tried to register the slogan “America's
Freshest Ice Cream” but it was rejected on the
grounds that it was not capable of distinguishing
that manufacturer's ice cream product from another.
In other words, the slogan did not serve to identify
the source of the ice cream.
As part of this same requirement, often the slogan
is not actually part of the packaging of the product
and only appears in advertising for that product.
In such an instance, it becomes even more difficult
to establish that the slogan is being used as a source
identifier.
Additionally, unless the slogan is in itself inherently
distinctive and qualifies as a mark in itself, the
USPTO requires that the slogan be identified with
the product or service so that the consuming public,
upon hearing the slogan, relates it to the particular
product or service. This requirement means that the
slogan has developed what the law refers to as a “secondary
meaning.” The best examples of this type of
slogan are “Just Do It” (Nike) and “Finger
Lickin” Good (KFC).
However, it is wise to remember that even if a slogan
does not rise to the level of being protectable under
federal registration guidelines, the law protects
such slogans in other ways. There are rights of trademark
that are based on “common law” principles
and unfair competition and these relate to the issues
discussed above regarding secondary meaning. Thus,
even if the slogan is not the subject of a federal
registration, it can be protectable upon a showing
of such secondary meaning.
|
The United States Copyright office
regulations do not allow for copyright registration
on “short phrases” and “slogans.”
Thus one issue facing slogans as copyrights is their
very brevity and thus the marketing factor that mandates
that brevity cuts into the legal mandates.
The same law prevents the registration of “words,
phrases, symbols, or designs that identify the source
of the goods or services of one party and distinguish
them from those of others.” This area of protection
is left to the trademark laws.
However, do keep in mind that this article deals with
protecting advertising slogans, slogans that are intended
to identify a source. To the extent that a slogan
can pass the “originality” test and is
not intended as such identifier, i.e. is not intended
to be used as a trademark, it may be possible to protect
it via copyright. In this regard, read “Fair
Use: Further, Further Issues.” |
In sum, protecting slogans is often
a very difficult proposition. However, from the marketing
as well as the legal standpoint, the more that such
slogans are used in tight connection to a product
or service, the more weight such use may carry over
time in terms of the trademark registration process.
The user of the slogan should keep detailed records
and notes as well as copies of all uses of the slogan
in order to document claims of “secondary meaning,"
both for purposes of federal registration as well
as its claims under unfair competition and common
law trademark laws.
© 2001 Ivan Hoffman
|
 Ivan
Hoffman is an Internet law, publishing, copyright, corporate
training and online education, trademark and music attorney,
practicing for over 28 years. His web site, http://www.ivanhoffman.com
has won six awards. You may reach him on the Internet at
ivan@ivanhoffman.com
This article is not intended as a substitute for legal advice.
The specific facts that apply to your matter may make the
outcome different than would be anticipated by you. You
should consult with an attorney familiar with the issues
and the laws.
****************
No portion of this article may be copied, retransmitted,
reposted, duplicated or otherwise used without the
express written approval of the author. |
| AdSlogans.com -- Wise Words/18 |
 |
|
|
|
