If you’ve developed a clever slogan or tagline for your new or existing business, now is the time to figure out if it can be trademarked, and if so, how. There are numerous resources online to address these questions, including those provided by the federal government. However, if it seems a little daunting, never hesitate to contact an attorney for a consultation.
Trademark rules for taglines
The U.S. Patent and Trademark Office’s Trademark Manual of Examining Procedure, Section 1213.05(b)(i) defines a slogan based on Merriam-Webster. A slogan is a “brief attention-getting phrase used in advertising or promotion.” However, the slogan, phrase, or tagline cannot be generic, merely descriptive, or merely information. If it is not more than these factors, then a trademark application may be denied.
It can be difficult to determine if your slogan is too generic or not. That is because there are plenty of seemingly generic slogans that have become trademarked, and that is because they have taken on a greater, secondary meaning. Saying or hearing that tagline immediately makes you or the listener think about a certain product or service.
Examples of slogans or taglines that were “trademarkable” include Budweiser’s “The King of Beers,” the Terminator film’s “Hasta La Vista Baby,” McDonald’s “I’m Lovin’ It,” and Nike’s “Just Do It.” These slogans are inherently distinctive and creative, or they have formed a secondary meaning that immediately calls a certain product or service to mind. Yet generic sayings like “I love NYC” or “Proudly Made in the USA” are not trademarkable, according to Heather B. Repicky of Nutter McClennen & Fish Law Firm.
Do your research
You can only trademark a word, short phrase, symbol, design, graphic, sound, or combination of these things if they are not already being used by another business. Once you come up with your tagline, you want to conduct in-depth research to ensure someone else isn’t already using it or that another individual or company doesn’t use something remarkably similar.
Search the U.S. trademark electronic search system (TESS). Searching TESS can be a little complicated. If you are unsure of how to do so properly, it’s a good idea to speak with an experienced trademark lawyer and have them do your research and search for you. An attorney can advise you if your slogan bears too close a resemblance to another business’s, particularly one geographically distant from you.
Because trademark registration is not required, you should be careful not to rely solely on TESS. There could be the same or a similar slogan out there that is not in the federal system. You should also run a Google search to find businesses which may be using your same slogan. However, searching the phrase one time isn’t enough. Try using various search engines and searching slightly different wording and phrases.
If you do not conduct a thorough search before registering your slogan, you might catch the attention of a business who believes you are infringing on their trademark, at which point having a lawyer on your side would prove particularly important.
“Most trademark owners subscribe to watching services,” says Paul C. Van Slyke, senior counsel at Hoover Slovacek specializing in intellectual property litigation and trademark law. “So you might get somebody who notices your application to register and they might not have even noticed or cared about you, because you’re in a remote geographical area to them. But if you apply to register a trademark, then they’re more likely to notice you and to oppose the trademark and send a cease and desist letter. A lawyer would help you decide whether it was worth applying, and do a basic check for other registered marks that are similar.”
If you plan to register your trademark in one or more states, that state may also have a searchable database. For instance, Illinois’ Secretary of State offers a Trademark/Servicemark Search.
Start using it
Once you are confident you won’t step on another business’s toes, start to use your tagline. Put it on your website and social media pages. If your business utilizes merchandise, add it to the t-shirts, hoodies, and mugs. Use it in your marketing campaigns. This builds exclusivity and builds your right to keep others from using it. If you come up with a tagline or slogan and only use it occasionally, you may have less success in keeping others from using that same tagline in the future. Your goal should be to make that tagline synonymous with your brand or a specific product or service you offer.
Register with your state
Once you start using your tagline or slogan, you should register it with your state. Typically, the Secretary of State will handle trademark registration, though there may be a separate trademark office. For example, in Illinois, you would mail a Trademark or Service Mark Application to the Secretary of State in Springfield. For New York, you mail an Original Application to Register a Trademark to the Department of State in Albany. You should register the tagline in each state in which it will be used. If it’s going to be used online, and therefore in any state, it is especially important to seek federal protection.
Apply for federal registration
You can fill out the U.S. trademark application online with the Trademark Electronic Application System (TEAS). You must fill out one application for your tagline. If there is any other aspect to it, such as a sound or graphic, then you need to fill out a separate application for this unique mark. Each application will have its own fee, which is non-refundable no matter what happens with your application.
Federal registration of your trademark is not required. However, it gives multiple advantages, according to Fish & Richardson. If you register the trademark, it provides notice to the public that it is yours. You can claim the exclusive right to use the slogan. There is also a legal presumption that you own the slogan. If someone else uses it, you have the right to take legal action.
If you have any questions about establishing a tagline for your business and obtaining trademark protection, speak with an experienced local attorney.
Van Slyke outlined the trouble one of his clients faced after trying—and failing—to register a trademark on his own. “There are a whole lot of things he did wrong, and he got this rejection letter and didn’t have any idea what the examining attorney was talking about for most of it. He thought it was like applying for your driver’s license. It’s not like that. It takes years before you learn the ropes about how to register trademarks, what are the pitfalls of doing it one way versus another, how to respond when the examiner says, ‘this name is too resembling of an existing registered trademark.’”
An attorney specializing in trademark law will be able to advise you on registering your slogan in the correct way, saving you time, money, and legal trouble later on.