FromThe Institute of Trade Mark AttorneyscomesRegistering Slogans As Trade Marks
Registering a Slogan
'Just Do It', 'Beanz Meanz Heinz', 'It's the Real Thing'. All slogans that come readily to mind when you think of the major corporations and their tag lines. What you might not realise, however, is that they are all registered trade marks and, as such, could easily be followed by the symbol ®.
The Institute of Trade Mark Attorneys (ITMA) sets out in this article to answer a few of the most commonly asked questions about trade marks and we begin by answering the question of why those companies above bothered to register those slogans?Well, the answer is really quite simple. Once registered, trade marks cannot be used by anyone else for the same goods or services for which the trade mark is registered. If they are, then the companies can take immediate action to prevent further abuse and, indeed, can seek compensation for any damage to their reputation.
If the slogans are not registered, then the legal processes are much more tortuous, costly and less certain of succeeding.Many companies do not bother to use the ® symbol where slogans are concerned. However, you are likely to see it against brand names that have been registered e.g. 'PENGUIN' for biscuits, 'MARS' for chocolates or 'CHANEL' for perfume. Only those trade marks that have been registered can show the ®. It is illegal to show the ® symbol if the mark is not registered.Many trade marks are accompanied by the symbol À. This is acceptable even if the mark has not been registered. In many cases it is used by companies to denote an application for registration is in progress, or it can help to establish registration by usage. Anyone can use the À mark.
It's Wise to Check
But, beware, if you are using a trade mark owned or registered by someone else you may well be infringing their rights. It is always worth checking that no-one else is using your preferred mark before entering the marketplace. You can do this by consulting a trade mark attorney; more about which follows later in this article.To conclude on the various symbols that may accompany a trade mark. Occasionally, the SM symbol appears against a trade mark. This denotes Service Mark. In 1986, in the UK, trade marks became applicable to services as well as goods; previously only goods could carry registered trade marks.
Shortly after its introduction a lot of companies providing services used the SM symbol, but that has, more or less, fallen into disuse as the À and ® symbols have become generally recognisable as indicating trade marks for all goods and services.So, apart from attaching a symbol to denote your trade mark is registered, what other advice can the Institute of Trade Mark Attorneys offer the advertising executive about slogans?In order to register your slogan as a trade mark and prevent others from using it, the phrase must be distinctive and capable of distinguishing your goods or services from a third party.
Need to be Unique & Non-Descriptive
If your slogan is purely descriptive, it is highly unlikely that you would be able to register it as a trade mark; at least not as a simple slogan on its own. Similarly, if your slogan is not distinctive, differentiating your goods or services from others, then that too would be unlikely to be able to be registered. This is the reason why so many companies can use slogans such as 'Simply the best' or 'The natural choice', as they do, without infringing others' trade marks.What advertising creatives need to come up with are slogans that are unique and non-descriptive. That way, the slogan can be registered as a trade mark and others will be prevented from using it or, if they do, they would be liable to infringement action.The final piece of advice, already referred to above, is that you should consider using the services of a registered trade-mark attorney and, preferably one that is a member of the Institute of Trade Mark Attorneys. By using one of ITMA's members, you are assured of getting top professional advice from qualified registered trade-mark attorneys who have undergone rigorous training and examination.
They will conduct all searches to ensure no-one else has already registered the slogan or other trade mark, or something confusingly similar. They will make the application to cover the geographical territories and classes of goods or services for which you seek protection and handle all queries. They can renew your registration (every ten years) and can act for you in ensuring no-one else infringes your mark and, if they do, take the necessary action to prevent further abuse.