Registering Slogans in the United States
Published: April 21, 2021
Elizabeth Stafki Pirkey Barber PLLC Austin, Texas, USA INTA Bulletins—North America Subcommittee
Slogans can be highly effective promotional tools. By design, they are attention-grabbing and punchy. They may convey information about goods or services or make a claim that the goods or services are the best that money can buy. However, some of the same elements that make slogans attractive to brand owners can also render them unregistrable.
This article examines some of the most common grounds for refusal of registration for slogans in the United States and proposes tips for avoiding them, especially at a time when there has been an upward turn in refusals.
Slogans are commonly defined as “advertising phrases” or catch phrases used to promote a product or service. See J. Thomas McCarthy, 1 McCarthy on Trademarks and Unfair Competition § 7:19 (5th ed. 2019); Trademark Manual of Examining Procedure (TMEP) § 1213.05(b)(i). Slogans are often used in conjunction with a house mark or product mark with a subset of slogans incorporating the mark itself (for instance, “You are in good hands with ALLSTATE”). They often convey information about a brand owner’s goods or services or praise some aspect of those goods or services.
In the United States, slogans are registrable 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. In that sense, slogans do not differ from other types of marks. The U.S. Patent and Trademark Office (USPTO) has historically treated slogans as inherently distinctive although the Office has seemingly adopted a narrower view of what constitutes an inherently distinctive slogan in recent years. As a result, there has been an uptick in refusals of applications for slogan marks.
Inherently distinctive slogans along with descriptive slogans that have achieved secondary meaning may be registered on the Principal Register. Examples of slogans registered on the Principal Register include AMERICA RUNS ON DUNKIN’ (U.S. Reg. No. 5417464, DD IP Holder LLC), SAVE MONEY. LIVE BETTER. (U.S. Reg. No. 4465793, Walmart Apollo, LLC), and I’M LOVIN’ IT (U.S. Reg. No. 2978887, McDonald’s Corporation).
Descriptive slogans that can develop secondary meaning (but have not yet done so) are eligible for registration on the Supplemental Register if the mark is in use or the application is based on a foreign registration. The Supplemental Register is not an option for applications filed through the Madrid System for the International Registration of Marks. Examples of slogans registered on the Supplemental Register include BEST EVER MATTRESS COMPANY (U.S. Reg. No. 6149842, Bemco Mattress, Inc.), MINDFUL MANAGERS (U.S. Reg. No. 5645557, Abrevista, LLC), and YOUR EXPERTS IN PLASTICS (U.S. Reg. No. 5645582, Asahi/America, Inc.).
However, brand owners who attempt to register slogans may find the same aspects of the slogans that make them attractive may prevent them from functioning as a trademark. The “critical inquiry” for determining whether the slogan fails to function as a mark is “how the designation would be perceived by the relevant public.” See In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (TTAB 2010). In making this determination, the examining attorney will look to the applicant’s specimen as well as outside sources that shed light on how both the applicant and third parties use the slogan in the marketplace.
The [USPTO] has historically treated slogans as inherently distinctive although [it] has seemingly adopted a narrower view ... in recent years.
Types of slogans that are commonly rejected by the USPTO for failure to function as a mark include those that (1) convey general information about the goods or services; (2) consist of phrases commonly used in everyday speech; and/or (3) are laudatory phrases. While these represent categories of slogans that are commonly refused, the categories themselves are not mutually exclusive and the list is not exhaustive. Additional details on each of these categories follow below.
Phrases that Convey General Information
This category includes slogans that only convey information about the brand owner’s goods or services, such that they would not be perceived as source indicators. The slogan may convey various types of information, such as the manufacturing process for the goods, the fact that services are sold at a low price, or the flavor of certain foods. Examples of applications for slogans that were refused on this basis are listed below.
- UNLIMITED CARRYOVER for telephone communication services and related services. See In re TracFone Wireless, Inc., 2019 USPQ2d 222983, U.S. Application Serial No. 77/488,762; Reg. No. 3,868,810 (TTAB 2019).
- HOURS OF ENERGY NOW for dietary supplements and energy shots. See In re Innovation Ventures, LLC, U.S. Application Serial No. 85637294 (TTAB 2014) (non-precedential).
- THE TASTE OF PREMIUM ICE CREAM WITH THE CALORIES OF YOGURT for frozen custards. See In re Kohr Brothers, Inc., U.S. Application Serial No. 78963463 (TTAB 2009) (non-precedential).
Applicants can attempt to minimize the risk of a refusal on this basis by carefully selecting the specimen of use for the application. The USPTO has rejected applications with specimens that (1) present the slogan as one bullet point in a list of other features of the goods or services; (2) do not set the slogan apart from surrounding text by presenting it in a different font or size; and (3) display the slogan relatively far from the applicant’s house mark or product mark.
Brand owners, therefore, should be cognizant of how the slogan appears on specimens of use relative to a house mark, product mark, or trade name. The USPTO has rejected applications with specimens showing slogans next to trade names where the slogan was less prominent than the trade name such that the slogan would be perceived as merely informational. See In re Home Dynamix, LLC, U.S. Application Serial No. 87116576 (TTAB 2017) (non-precedential).
Submitting a specimen that avoids these issues might decrease the likelihood that an application will receive a failure to function refusal. However, some categories of slogans are incapable of functioning as trademarks because their “inherent nature” is merely informational. See In re TracFone Wireless, Inc., 2019 USPQ2d 222983 (TTAB 2019). In such cases, even an application with a perfect specimen will not avoid a refusal.
Brand owners who attempt to register slogans may find the same aspects ... that make them attractive may prevent them from functioning as a trademark.
Commonly Used Phrases
Slogans that consist of phrases that are commonly used may also be rejected on a failure to function basis. This category includes phrases that are commonly used in connection with the applicant’s goods or services (DRIVE SAFELY for automobiles) as well as social or political messages that are used more generally (OCCUPY WALL STREET).
The following are examples of applications for slogans that were refused on this basis:
- I ♥ DC design mark for clothing, bags, and toys. C. One Wholesaler, Inc. v. Jonathan E. Chien, 120 USPQ2d 1710, U.S. Application Serial No. 77/962,853 (TTAB 2016) (precedential).
- INVESTING IN AMERICAN JOBS for “promoting public awareness for goods made or assembled by American workers” and various retail store services. In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, U.S. Application Serial No. 86/566,858; Reg. No. 4,841,044 (TTAB 2019) (precedential).
- INTELLIGENCE OF THINGS for business management services, technical support services, engineering services, and related services. In re Flex Ltd., U.S. Application Serial Nos. 86453853 and 86493735 (TTAB 2019) (non-precedential).
Applicants can attempt to minimize the risk of a refusal on this basis by avoiding specimens that display the slogan in an ornamental manner. For example, this would include specimens showing the slogan on the front of a t-shirt or on the side of a mug. However, the more common the slogan, the more likely it will receive a failure to function refusal, regardless of the specimen submitted.
These slogans can be considered a subset of commonly used phrases. It includes superiority claims that are often widely used by third parties. The following are examples of applications for slogans that were refused on this basis:
- THE GREATEST BAR for restaurant and bar services. In re The Place, Inc., 76 USPQ2d 1467, U.S. Application Serial No. 87/777,571; Reg. No. 5,569,153 (TTAB 2005) (non-precedential).
- WORLD’S BEST DOWN for pillows, comforters, blankets, and throws containing down. In re Eddie Bauer Licensing Services LLC, U.S. Application Serial No. 87471896 (TTAB 2019) (non-precedential).
- THE BEST BEER IN AMERICA for beer and ale. In re Boston Beer Co. L.P., 198 F.3d 1370, U.S. Application Serial No. 74/464,118 (Fed. Cir. 1999).
There may not be much an applicant can do to avoid a failure to function refusal if the slogan falls into this category. That is because highly laudatory phrases may be perceived as inherently unregistrable, even if the applicant’s specimen of use is not considered. For example, the application for WORLD’S BEST DOWN was filed on an intent-to-use basis and received a failure to function refusal before the applicant submitted a specimen of use.
Applicants may be able to minimize the risk of refusal by taking a few precautions.
Slogans can be powerful promotional tools for brand owners, and registrations for slogans can be valuable assets. While some of the aspects that make a slogan attractive may make an application for that slogan more vulnerable to refusal, applicants may be able to minimize the risk of refusal by taking a few precautions.
Specimens of use should show the applicant using the slogan in a trademark sense and not merely to convey information about the good or service. Here, foreign applicants filing on the basis of a registration in their country of origin under Section 44(e) of the Trademark Act may have a slight advantage over applicants filing use-based applications as they will not need to show use to obtain a registration. All applicants may also want to review their use of the slogan online to ensure that it is not used in a way that would undermine an argument that the slogan is used as a trademark.
Taking these precautions may increase the brand owner’s odds of obtaining a registration and adding a valuable asset to its portfolio.
Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest.
© 2021 International Trademark Association
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