Trademarks

I know this blog is called “The Business of Patents,” but this is a trademark post.

One thing a lot of people seem to be interested in is how to protect slogans. They want to know how to protect those catchy phrases you hear sometimes like, Nike’s “Just do it”, Kentucky Fried Chicken’s “It’s Finger Lickin’ Good,” or McDonald’s “I’m Lovin’ It.”

Well, it’s not going to be through patents. Patents are for inventions and also designs, and a slogan in and of itself is not going to qualify as a design and especially won’t qualify as an invention.

So then you have copyright law. Well, it turns out that you can’t protect slogans, words, or short phrases through copyright law because copyright is intended to protect works of expression. It is thought that words and short phrases are not sufficiently expressive to qualify for copyright protection.  We do not want to let people own words and phrases outright, because it would be essentially allowing them to own parts of the language.

So that leaves trademark law. Yes, you can protect slogans with trademark law. However, remember that you’re not protecting the slogan outright. You’re protecting the use of the slogan in connection with goods or services. So there has to be some sort of goods or services you want to associate the slogan with. People often want to put them on t-shirts or glasses or something like that. In fact, I have a friend who is a comedian,  and he wanted to make some wine glasses with a slogan that he uses in his act. You can do that. The hitch is that when you put a slogan on a glass or on a T-shirt, it’s actually serving two functions. Primarily, it’s functioning as a decorative or ornamental feature, almost like a work of art. Secondarily, it’s functioning as an identifier of source. In other words, when you see the t-shirt that says “Just do it,” you’ll know it’s from a particular source.

The problem is that if you go to register a slogan, the Trademark Office won’t assume that it’s functioning as a source identifier. You’re going to have to actually prove that the slogan has acquired distinctiveness as a source identifier. You can do that if you’ve been using the mark in commerce for five years. You can also do it by providing evidence of advertising expenditures and consumer surveys.

The issue of acquired distinctiveness will come up whenever you want to put a slogan on a product on which the slogan is functioning as a work of art or a decorative feature. One trick you can use to get your registration through more quickly is to also put the slogan on a label or the packaging, because that particular use of the mark will not be treated as a decorative feature. Then, you may be able to get the registration without proving acquire distinctiveness.