How do I Trademark a Slogan?

Here's another question from one of our readers:

Shannon ....

I'm a book author, and I came up with a very 'catchy' slogan to be used in future advertising campaign.

What steps do I need to take to trademark and/or copyright this slogan so that it is exclusively mine??

Alan Roger Currie Author, "Mode One: Let The Women Know What You're REALLY Thinking"

Thanks for your question Alan!

First, it's not possible to copyright a slogan.

Copyrights can be obtained for things of an artistic nature. This includes, of course, poetry, films, sculptures, music, fiction, etc. But can also include things that may not necessarily seem "artistic" in the general sense of the word. Copyrights can also be obtained for advertising copy, games, software programs and blueprints, to name just a few.

It may be possible to file for a trademark for the slogan as long as it's used to indicate & identify the source of goods/services.

If we're talking about a merely informational slogan or a slogan that conveys advertising information, it's not eligible for trademark registration.

Click these links to see what the USPTO has to say:

Slogans or Words Used on the Goods
Slogans, Refusal Based on Descriptiveness
Matter that Does Not Function as a Service Mark

Hope that helps Alan!

Any other questions, please email me: by clicking here OR comment below.

Read more about trademarks here

Trademark Question From a Reader

"If I have an agreement as an exclusive distributor of a product, and the product name was in use prior to my agreement, but not trademarked, can I apply for and receive a trademark for the product name."

Sincerely, Jerry

Thanks for your question Jerry!

Yes, a trademark does grant a legal presumption of the registrant's ownership of the mark and the registrant's exclusive right to use the mark nationwide on or in connection with the goods and/or services listed in the registration.

However, it sounds as if Common-Law rights are going to be at play here. So, even if the manufacturer does not have a trademark, they are still going to have Common-Law rights to the name.

Here's what the USPTO has to say: "Where the mark is used by a related company, the owner is the party who controls the nature and quality of the goods sold or services rendered under the mark. The owner is the only proper party to apply for registration."

Hope that helps Jerry!

Any other questions out there? Please email me at shannon at tmexpress dot com.

Read more about trademarks here

TradeMark Express Blog: Schedule for Posts

Monday: Trademark Related Issues
* Tips, hints, news, questions

Tuesday: Small/New Business Related Issues
* Tips, hints, news, questions

Wednesday: Copyright/Arts Related Issues
* Tips, hints, news, questions

Thursday: Reader's Day!
* Want a post about something specific? Have questions? Email me at shannon@tmexpress.com & I'll make a post just for you. When emailing, be sure to mention the TME Blog in the subject line

Friday: Free Day aka Fun Day
* Open ended day for anything related to any of the above and/or anything in the general vein of silly

We'll Be Back in Two Shakes...

The good news is that business is busy, busy...the bad news is that the blog's been a bit lackluster. But, no worries, we'll be back on track soon.

Anything you'd like to ask? Talk about? Send me your ideas & let's chat!

shannon at tmexpress dot com

How to Know When to Trademark Your Logo

I got a really great question from a reader in response to my first call for questions:

"I have a product that I want to market and have a name. I do not yet have a mark for this product but want to protect the name. Do I file intent to use and can I do that without having the actual mark?"

There's two distinct questions here – (1) the use of Intent-to-Use & (2) adding a logo after the fact.

(1) Intent-to-Use Trademark Applications: I will definitely dedicate a more detailed post to these two types of applications but to sum it up…

A mark, be it a name, logo or slogan, must be in use in at least 2 states OR between the US & any foreign country in order to obtain Federal trademark registration. However, an applicant can file the mark even if they're only doing business in one state OR not in business at all.

There is a hiccup in filing an Intent-to-Use application in that the USPTO is going to need to know that the mark is being sold across state lines or in another country. This requires another form, a $100 and a specimen.

(2) Adding a Logo to Your Trademark Application:

The USPTO is vague & clear about this matter in a way that really only the Federal government could be:

"The examining attorney will determine whether any proposed amendment of the mark is acceptable. A change is not acceptable if it materially alters the character of the mark. The modified mark must contain what is the essence of the original mark, and the new form must create the impression of being essentially the same mark."

Eh, what? Okay, so basically, if you intend to add anything at all to your trademark application AFTER it's been filed, it has to be something very, very slight. For instance, you may be able to delete generic or descriptive words from your filing.

But, of course, the USPTO has a caveat about that too: "For example, the deletion of the generic name of the goods or services would not generally constitute a material alteration, unless it was so integrated into the mark that the deletion would alter the commercial impression."

So, in a long winded way, it's probably not possible to add a logo to a pending application as the addition of the logo will more than likely "materially alter" the mark. But as with most trademark issues, it's recommended that you consult with a trademark company or attorney about your specifics.

TradeMark Express Blog Schedule

Trademark Application FAQ
What good is a logo anyhow?

Get Your Piping Hot Questions Answered Here!

Every Thursday, I'll answer your questions and each question will have its very own post. For days that I don't have any questions to answer, I'll post some interesting news tidbits.

To get a question or questions to me, please comment on any post or email me at shannon at tmexpress dot com. If emailing, make sure your subject line references the blog in some way, e.g. Question for the Blog. That way I won't accidentally delete you ;)

Now on to the news...
Radio Talkers Denied 'Obamanation' Trademark
Viacom sues YouTube...
The Basics for Starting a Business

Generic Names

Scott Allen posed a very interesting question in response to this post. Here's what Scott's wondering:

"How can you go about protesting a first use claim if you're not the one making the claim of prior use, but you simply have material knowledge of it (heck, so does Google) and don't want to see a generic word hijacked as a mark? Last August, it seems that Learn.com filed a trademark on the word "webinar" claiming first use in commerce June 6, 2000. Now I know for a fact that the word was used in commerce before that, because my company was using it, and we borrowed the term from WebEx. I did some searching on Google (webinar + 1999) and quickly found several more examples, including a couple from my employer at the time. I hate to see generic words hijacked like this (familiar with Entrepreneur Media?). What can be done about this?"

Great question, Scott. The USPTO is actually quite good at catching these marks at the gate. For instance, the example you bring up is a perfect case in point. On January 9th of this year, the USPTO issued a refusal based on that the mark is merely descriptive. It's now on the applicant to submit evidence & arguments supporting their rights to registration.

It's my understanding that only those who "believe that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition with the Trademark Trial and Appeal Board." As far as what the USPTO defines as "damage" – hmm, any ideas out there?

A great lesson here for anyone that coins a catchy name or term is to trademark that sucker right away. A good example of this is mobisodes ®,which is a registered trademark owned by Twentieth Century Fox.A Google ® search pops up 43,900 hits on this term. Now, of course, it's on Fox to protect their trademark

Hope that answers your question Scott! Let me know if I can answer anything else for you!

• What factors should be considered in choosing a strong trademark?
• What are some common causes that the USPTO would refuse a trademark?

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