TRADEMARK EXAMPLES:

SLOGANS

Slogans May Become Trademarks if used Correctly to Show a Source Indicator

(and the specimen must show it used correctly!)

The USPTO may refuse to register slogans (words or composite word and design marks) that convey information but do not function as marks. The fact that a slogan appears on a product (for example a t-shirt, hat or bag) does not make it a trademark. In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993).


Informational messages and slogans without trademark significance are not inherently distinctive. The rationale is that to grant exclusive rights to applicants for ordinary and commonly used phrases would interfere with the rights of others in the industry to freely use the familiar phrase. (Hint: Those seeking trademark registration of slogans should avoid common and mundane slogans that inform potential customers of facts.) The USPTO Trademark Manual of Examining Procedure cites the rule at TMEP 1209.03(s) Slogans:

Slogans that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness).


Words or slogans that are prominently featured as ornamentation on the front of a product in larger type than the other words do NOT create the commercial impression of a trademark. A slogan that is displayed on the front of a product in a manner that “immediately catches the eye” suggest ornamentation rather than a source-identifying function on the goods. In re Pro-Line Corp., 28 USPQ2d 1141, 1142 (TTAB 1993). The size, location, and dominance of a slogan are all important factors.


But if done correctly to show source, slogans may become trademarks. “Matter which serves as part of the aesthetic ornamentation of goods, such as T-shirts and hats, may nevertheless be registered as a trademark for such goods if it also serves a source-indicating function.” In re Dimitri's Inc., 9 USPQ2d 1666, 1667 (TTAB 1988). A slogan can function as a trademark if it is not merely descriptive or informational. See Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970). Whether a slogan is capable of distinguishing its products (or services) from those of others must be determined on

  • The basis of the significance or meaning of the mark as applied to the products (or services);
  • The context in which the mark is used in the specimens, and
  • The likely reaction of the average consumer encountering the mark in its natural environment.

In re Brock Residence Inns, Inc., 222 USPQ 920, 922 (TTAB 1984).


EXAMPLES OF SLOGAN REFUSALS

CITATION

DRIVE SAFELY refused because phrase would not be regarded as indicator of source but as a familiar safety admonition.

In re Volvo Cars of North America Inc., 46 USPQ2d 1455, 1459-60 (TTAB 1998)

THINK GREEN and composite THINK GREEN and design refused because, rather than be regarded as indicators of source, they would be regarded as "slogan of environmental awareness and/or ecological consciousness."

In re Manco Inc., 24 USPQ2d 1938, 1941-42 (TTAB 1992)

WATCH THAT CHILD is a familiar safety slogan and would not be perceived as a trademark.

In re Tilcon Warren, Inc., 221 USPQ 86 (TTAB 1984)


WHY PAY MORE refused for supermarket services, noting that the "familiar phrase" would be perceived as suggesting only that the applicant offered lower prices in its stores.

In re Wakefern Food Corp., 222 USPQ 76 (TTAB 1984)


THE BEST BEER IN AMERICA for beer and ale was a “common, laudatory advertising phrase” that “is incapable of registration as a trademark.”


In re Boston Beer Co., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)


WE MAKE IT, YOU BAKE IT! Newspaper advertisements referred "only to the pizza which may be purchased in applicant's store" and "in no way serves to function as a service mark to identify and distinguish applicant's supermarket grocery store services."


In re Niagara Frontier Services, Inc., 221 USPQ 284 (TTAB 1983)

GUARANTEED STARTING found to be ordinary words that convey information about the services, not a service mark for the services of “winterizing” motor vehicles.

In re Standard Oil Co., 275 F.2d 945, 125 USPQ 227 (C.C.P.A. 1960)

BRAND NAMES FOR LESS found to be informational phrase that does not function as a mark for retail store services.


In re Melville Corp., 228 USPQ 970 (TTAB 1986)

FOR A DAY, A WEEK, A MONTH OR MORE so highly descriptive and informational in nature that purchasers would be unlikely to perceive it as an indicator of the source of hotel services.

In re Brock Residence Inns, Inc., 222 USPQ 920 (TTAB 1984)

IN ONE DAY not used as source identifier but merely as a component of advertising matter that conveyed a characteristic of applicant’s plastic surgery services.

In re Gilbert Eiseman, P.C., 220 USPQ 89 (TTAB 1983)


THINK ABOUT IT found to be an informational or instructional phrase that would not be perceived as a mark for banking services.


In re European-American Bank & Trust Co., 201 USPQ 788 (TTAB 1979)

PROUDLY MADE IN THE USA failed to function as a mark for electric shavers and parts thereof

In re Remington Products, Inc., 3 USPQ2d 1714 (TTAB 1987)

IRESTMYCASE for “providing professional legal services, namely counseling in legal matters, drafting documents, and representation in adversarial and administrative matters” failed to function as a mark. It was only shown in the specimens in the context of applicant’s Internet website and email address and it does not separately identify applicant’s legal services as such.

In re Vicki Roberts, TTAB 2008

“Aaa,” as used on the specimen, found to identify the applicant’s ratings instead of its rating services.

In re Moody’s Investors Service Inc., 13 USPQ2d 2043 (TTAB 1989)

SKYLOUNGER as a mark for the “air transportation of passengers” found to identify a seat in the first class section of an airplane and does not function as mark for the more general air transportation services.

In re British Caledonian Airways Ltd., 218 USPQ 737 (TTAB 1983)

MINI-MOBILE identifies only a vehicle used in rendering services and does not serve to identify the production of television videotapes for others.

In re Editel Productions, Inc., 189 USPQ 111 (TTAB 1975)

WIENERMOBILE does not function as mark for advertising and promoting the sale of wieners, where it is used only to identify a vehicle used in rendering claimed services.

In re Oscar Mayer & Co. Inc., 171 USPQ 571 (TTAB 1971)

EXAMPLES OF SLOGAN APPROVALS

(where an examiner’s refusal was reversed by the TTAB)

CITATION

QUALITY SHOWS, set off from text of advertising copy in extremely large typeface and reiterated at the conclusion of the narrative portion of the ad, held to be a registrable service mark for applicant’s real estate management and leasing services, because it was used in a way that made a commercial impression separate from that of the other elements of advertising material upon which it was used, such that the designation would be recognized by prospective customers as a source identifier.


In re Post Properties, Inc., 227 USPQ 334 (TTAB 1985)


THE GOLFERS’ WINE is not merely descriptive in connection with wines because many people like and purchase wine and wine marketers target many different groups in their advertising. The evidence does not establish that golfers are a more significant group than any other group, for example, tennis players or antique collectors, such that using the term “GOLFERS” in connection with wines is merely descriptive of a significant characteristic of those wines.

In re Vila Sol II-Empreendimentos Turisticos, SA, (TTAB 2009)

HYDRON MAKES THE DIFFERENCE in the specimen infomercial creates an association between the mark and the goods. The test for constituting a display associated with the goods is satisfied because the images immediately preceding or immediately following the mark prominently feature pictures of the goods. The information on how to order the goods is also given within a reasonable time of when the mark and the goods are shown.

In re Hydron Technologies, Inc.(TTAB 1999)


MODEL NUMBERS ARE TYPICALLY NOT GOOD TRADEMARKS:

MODEL NUMBERS MAY BECOME TRADEMARKS IF THE MARK IS USED CORRECTLY TO SHOW A SOURCE INDICATOR

(and the specimen must show it used correctly!)


A specimen for a potential trademark would generally fail to function as a trademark if the applied-for mark solely identifies a model number or grade designation without any arbitrariness in the designation because they are merely-descriptive of the product.

However, the use of the model number determines whether or not it is descriptive. “[T]he issue of whether the numerical marks are merely descriptive cannot be resolved until they have been used, because it is the manner in which the numerical marks are used that renders them merely descriptive (solely model designators) or not.”  Eastman Kodak Co. v. Bell & Howell Document Management Products Co., 994 F.2d 1569 (C.A.Fed., 1993).

Grade designations are not typically suitable for trademark because rather than indicate the source of the product, they are used to denote that a product has a certain level of quality within a defined range. They may also indicate that a product has a certain classification, size, weight, type, degree, or mode of manufacturing. Mere grade designations are often used by competitors within an industry, or by the general public, and do not indicate origin from a single source because their principal function is to provide information about the product to a consumer. See 1 Anne Gilson LaLonde, Gilson on Trademarks §2.03(4)(a) (Matthew Bender 2011).


TMEP §1202.16 describes the rule:

Model or Grade Designations Subject matter used solely as a model, style or grade designation within a product line does not function as a trademark. In re Dana Corp., 12 USPQ2d 1748 (TTAB 1989) (alphanumeric designations, such as “5-469X,” held unregistrable for universal joint couplings; evidence insufficient to establish distinctiveness and recognition as a mark). Cf. In re Clairol Inc., 457 F.2d 509, 173 USPQ 355 (C.C.P.A. 1972) (SWEDISH CRYSTAL found to be a registrable trademark, not merely a color designation, for a hair coloring preparation, the Court relying on the arbitrariness of the mark, its manner of use and the fact that it was always used in addition to a shade designation); In re Petersen Mfg. Co., Inc., 229 USPQ 466, 468 (TTAB 1986) (letter-number combinations found registrable for locking hand tools, the Board stating, “[T]here is no question that such model designations can, through use and promotion, be perceived as marks indicating origin in addition to functioning as model designations.”).


Model numbers are also problematic (but not impossible) because an application must be limited to only one mark and often applicants try to register part of a model number with open elements that will contain changing aspects of the model number. Unfortunately, an application must be limited to only one mark. 15 U.S.C. §1051(a)(1); Trademark Rule 2.52. A mark that contains a changeable or “phantom” element is considered to be more than one mark. In re International Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513 (Fed. Cir. 1999). In this decision, the court gave the rationale that primary purpose of registration is to provide notice to potential users of the same or a confusingly similar mark, and that to serve this purpose, the mark, as registered, must accurately reflect the way it is used in commerce so that someone who searches the registers of the USPTO for the mark, or a similar mark, will locate the registered mark. If elements can change, “phantom” marks with missing elements “encompass too many combinations and permutations to make a thorough and effective search possible.”



Not Just Patents ® Legal Services provides a very economical package for USPTO (or international) Trademark Registration and provides domestic representation for foreign applicants. See What to Expect from a Not Just Patents ® Trademark Attorney for more information on what steps we take to protect your rights and help you develop a strong trademark.


We suggest a Not Just Patents Five-Step Verification as part of a Plan for A Successful Trademark:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, we start with these steps:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.

*We don’t stop here but this is a good start!


Our rates are very reasonable. We can provide each step individually or as a trademark registration package. Our fixed price per classification for the whole package may be less than what you might pay to another attorney or law firm just to answer a USPTO Office Action Refusal at an hourly rate.


We can provide a quick and economical Response to Office Action (ROA). See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused. If someone is using your trademark in a way that harms you, we may be able to stop them through an opposition or a cancellation proceeding. If you are being opposed or are threatened with cancellation, we may be able to help as well. Timing is very important for a bunch of reasons: Opposition times are very short, times to answer Petitions to Cancel are only 40 days from when the petitions are filed, times to answer Oppositions can be very short, and sitting on your rights in general can cause problems. Don’t delay calling. We can help.


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