Businesses often want to have a slogan that describes what they’re selling, but in order to be protectable as a trademark, the slogan has to be “distinctive.” That is, it must be used to identify the source of the product or service. If it does not, the slogan “fails to function” as a mark.
The Trademark Manual of Examining Procedure makes clear that slogans and other phrases used by a variety of sources in the marketplace “to convey ordinary or familiar concepts or sentiments, as well as social, political, religious, or similar informational messages that are in common use or are otherwise generally understood” do not generally serve as marks.
This is for a couple of reasons. First, consumers are likely to see these types of phrases as an expression of support for the ideas embodied in the message rather than as an identifier of a single source of the goods or services.
Second, consumers usually buy goods featuring these messages precisely because of the sentiment expressed by the phrase.
Examples include these decisions from the Trademark Trial and Appeal Board (TTAB):
• I LOVE YOU SO MUCH for “charitable fundraising services by means of organizing and conducting special events” failed to function as a mark because it conveyed “a commonplace message of deep affection.”
• MAMA BEAR failed to function as a trademark for articles of clothing, because it was widely used and “conveys a message of aggressive protective parenting.”
• TEXAS LOVE failed to function as a trademark for hats and shirts because, to the relevant purchasing public, it “merely conveys a well-recognized and commonly expressed concept or sentiment” about “love for or from Texas” and did not serve to identify the source of the hats and shirts.
• LEGAL LANDMINES was not registrable as a service mark for business coaching services because the phrase conveyed a message about the dangers of unexpected legal crises and was widely used by third parties to convey the same information.
• WORST MOVIE EVER! also failed to function as a trademark for “parody of motion picture films and films for television comprising comedies and dramas featuring a mashup of different motion picture films.” The TTAB found that, due to extensive third-party use, consumers were used to seeing the phrase and wouldn’t view the applicant’s use of the term as indicating a sole source. In addition, the TTAB also didn’t want to allow the applicant to prevent competitors from using the term.
• TEAM JESUS failed to function as a mark for numerous garments and entertainment services because it was a “commonplace message of Christian affiliation” and in wide use for a long time “as an expression of enthusiasm, affection or affiliation.”
Please feel free to contact us if you have any questions about trademark law, if you need advice about how to choose a trademark or slogan, or if you need assistance registering or protecting your trademarks.
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