How to Successfully Register Slogan As A Trademark?
Are you wondering if a slogan can be protected and registered as a trademark?
Short answer: Yes. It can.
But in real-world cases, it may not be as simple as you might think for the reasons we will discuss in this article
Problem For Registering Slogan As A Trademark
In some jurisdictions, as in Indonesia and some other countries, registering a slogan as a trademark can be as straightforward as filing a non-slogan trademark application so long as the word(s) used in the slogan is/are not similar or identical to that/those of other existing trademark applications or registrations and they could comply with the substantive and formal requirements.
However, in other jurisdictions, especially in the US and in European countries, things can be a bit more complicated, costly and time-consuming before one can register a slogan as a trademark, and this is where we need to learn about why some slogans have been accepted and why some slogan have been rejected for trademark
What is Slogan?
A slogan is a short and striking memorable phrase used in advertising [Oxford Dictionary of English].
The Merriam-Webster Dictionary definition of a slogan is a “brief attention-getting phrase used in advertising or promotion.”
A slogan usually has the attributes of being memorable, very concise and appealing to the audience. [Wikipedia]
An example of a slogan or tagline is “Think Different” from Apple Company, which has been extensively used in the company’s advertising material worldwide and for many years.
Sometimes slogan is also called a tagline, motto, or a phrase used in a clan, political, commercial, religious, and other context as a repetitive expression (through advertising or promotion) of an idea, a purpose, a value or a mission that is directly associated by the general public with a particular group, company or community. For example: “You’ll Never Walk Alone” by Liverpool Football Club.
Why Slogan?
Almost every big company in the world uses slogan or tagline asides from their main trademarks, and they register their slogan as a trademark in many countries in the world. Why so? Isn’t their trademark sufficient?
A slogan is very much related to and crucial to the company’s brand development strategy. It is more than just information or description of the brand’s goods and or services, it is a unique tethering to the company’s whole image in the business.
In 2020, The Manifest surveyed 6 elements of a brand: Slogan, Company name, Colours, Logo, Fonts, and Shapes.
Based on the survey result, it turns out that Consumers value slogans more than any other brand element. Half of the people (50%) say a company’s slogan is the most important brand element, and 47% say a slogan or mission statement is essential when deciding to make a purchase.
The slogan seems to be playing a very important role in brand building in the eyes of the consumers and in the public perceptions.
The Slogan and The Brand
As you probably know, a brand is a “promise” in the mind of consumers (or potential consumers) regarding how excellent or poor the “user experience” that the consumers have or will have when they interact with everything about the brand (the company’s image, the quality of the products or services, the benefits, the added values, the seamlessness of all the involved processes, the purchasing experiences, the after service experiences, the brand community building etc.)
If you can create and develop a slogan that matches the public expectation of a brand and they could clearly associate the slogan with your group, company or community (not your products or services) without any doubt or confusion, you are most like be successful in registering your slogan as a trademark.
The slogan of a brand builds trust with customers and communicates the company’s ethos and mission.
Considering the important role of a slogan in a company’s brand building, we could again come back to the questions we asked earlier at the beginning of this article: can we register a slogan as a trademark? If we can, what makes the slogan rejected or accepted as a trademark?
Before answering these questions, let’s review some basic understanding of what kind of trademark can be registered and protected.
The First Requirement: Trademark Distinctiveness
To be registered as a trademark, slogans or taglines are subject to the same scrutiny as non-slogan trademarks during the examination in the Trademark Office.
In order to be protected and registered, substantively, a trademark is required to be inherently distinctive.
This principle is so crucial that we need to examine the strength of a trademark in view of its inherent distinctiveness.
We usually consider the level of distinctiveness of trademarks with varying degrees from the strongest to the weakest (NOTE: the accompanying examples are not taking into account the relative ground which may result in different final fates of trademark registration in different jurisdictions).
Fanciful terms or coined words — These are made-up terms, and there is no correlation to the goods or services being described. An example would be Google, Yahoo, Exxon, etc. A trademark made up of fanciful terms has the strongest level of distinctiveness.
Arbitrary terms — These are terms that consist of existing or publicly known words that have no correlation or meaning to the described goods or services. This would include Amazon (known as the name of a river in South America) and its e-commerce and cloud computing services. A trademark made up of arbitrary terms has a strong level of distinctiveness.
Suggestive terms — These are terms that partially suggest a relation or meaning, but still do not describe completely the goods or services. Examples would be MicroSoft, Citibank, Medicure, etc. A trademark made-up of suggestive terms could still be distinctive but it is no as strong as a trademark which consists of fanciful or arbitrary terms.
Descriptive terms — These terms describe characteristics of the products or the product themselves including the qualities, the nature, or any information pertaining to the goods or services, or commercial activity. A trademark made up of descriptive terms is distinctively weak, but if the proposed mark has established a Secondary Meaning (which we will discuss later), it may still have a good chance of being registered and protected. An example of this would be SHARP for television, or HOLLIDAY INN for hotel services.
Generic terms – These are terms that cannot be registered or protected as a trademark. They are not distinctive because they represent a type or category of goods or services. A generic word is also what the public understands to be the common name of the product or service in question—for example, “clock” is a generic word for timepieces or a previously registered fanciful trademark such as “ASPIRIN” which now has been considered as a generic word for pain relieving medicines.
If a proposed trademark consists of terms or a phrase that is entirely generic, descriptive, or informational, the phrase will not be considered a “trademark” and will be denied registrability by the registrar.
In order to be registered and protected as a trademark, the slogan must also be distinctive enough just like a non-slogan trademark. This is the first requirement.
Second Requirement: The Secondary Meaning of a Slogan
Considering the above level of distinctiveness, slogans which are mostly descriptive (and therefore distinctively weak) must have developed or established a Secondary Meaning that allows them to be distinctive enough to be protected as a trademark.
The secondary meaning goes beyond the literal meaning from a dictionary, and it begins when consumers encounter or see the slogan, they will associate the slogan directly with the brand or the company rather than simple information about the products or services itself, or the company’s primary commercial activity.
When you hear “Think Different”, you are not particularly thinking about Apple’s products, computers, Iphones, Ipads, etc. You are thinking about Apple’s image and brand as the company, the source and the origin of many innovative products and excellent services, including worldwide communities that love or hate everything about Apple.
A slogan is thought to have acquired a secondary meaning if the brand owner can demonstrate that the use of this slogan by another party would confuse consumers as to the origin of the goods or services.
When you hear a slogan like “Just do it” it is very clear to the public which company or brand this slogan has been associated with. So clear that it becomes distinctive. If another company create something like “Just do it Now”, the public will be confused and doubt if it is also coming from the same source.
Developing (and finally establishing) the secondary meaning of a slogan is a part of the greater strategy of the company’s brand-building. It takes time (many years), money (a huge amount of it for repetitive advertising campaigns), and other effective branding strategies that result in the acceptance in the public mind that the slogan has now been associated with the company and the brand.
Nike’s “Just Do It” slogan was first introduced in 1988 (more than 30 years ago). You can imagine the time and how much money and energy the company have been spending until now to establish the second meaning of the simple “Just Do It” slogan.
The public perception of the secondary meaning of the slogan can be measured through commercial surveys, market investigation, sales reports, documentation of advertising campaign evaluation and report, customer experience or user experience research, etc.If you are successful in building your brand and establishing the secondary meaning of your slogan are more than ready to register your slogan as a trademark anywhere in the world.
Slogans That Are Potentially Rejected As Trademark
There are several kinds of slogans that would likely be refused by the Trademark Office if they are to be applied for registration:
Descriptive or Informational Slogan
Slogans that are descriptive like “Build Your Computer Today” for a computer spare-part company cannot be registered as a trademark as it describes the commercial activity of the business.
Vision & Mission Slogan
Company vision, value or mission statement like ‘We Always Do the Best” cannot be registered as a trademark as it lacks distinctiveness.
Customer Service Slogan
Customer service statements like “Customers are Kings” or “We Serve Whole-Heartedly” cannot be registered as a trademark because they lack distinctiveness.
Promotional Slogan
Promotional messages like “Say it With Flower” or “Buy One Get One Free” for florists cannot be registered as a trademark as they are very descriptive and lack distinctiveness.
Takeaways
Registering a slogan as a trademark shall meet at least two requirements: distinctiveness and secondary meaning that points to your company or brand instead of your products or commercial activity. It takes a lot of time and money to prepare a slogan that is ready to be registered as a trademark.
If you’re just starting your business, registering a slogan as a trademark may not work for you, especially if you are in the US or European Countries. You need to first register the trademark for your products or services and build your brand over time including your slogan. When the public perception is enough to identify your slogan with your brand or company, then you could consider registering it to obtain protection.
Some jurisdictions (including Indonesia) allow registering a slogan as a trademark so long as no one has been using or registered it. You can consider conducting a preliminary trademark search in these jurisdictions and go ahead with filing a trademark application for registration if the search result is in your favour.