Examples of Trademark Slogans that ARE Trademark-able

What is a slogan? Here are a few different definitions with examples:

• TMEP 1213.05(b)(i): A slogan is a type of phrase and is defined as "a brief attention-getting phrase used in advertising or promotion" and "a catch phrase used to advertise a product." Merriam-Webster.com, search of "slogan," http://www.merriam-webster.com/dictionary/slogan  (Jan. 31, 2012); Webster’s New World College Dictionary (4th ed. 2010). A registrable slogan is one that is used in a trademark sense and functions as a trademark or service mark on the Principal or Supplemental Register, including the Principal Register under §2(f). Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970) (holding that the mark HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS FOR SURE for hair tinting, dyeing, coloring preparations had become distinctive of the goods and was registrable); In re The Hallicrafters Co., 153 USPQ 376 (TTAB 1967) (holding QUALITY THROUGH CRAFTSMANSHIP registrable for radio receivers and transmitters, power supplies, and antennae). Slogans, by their attention-getting nature, are treated as unitary matter and must not be broken up for purposes of requiring a disclaimer.
• A slogan or any other combination of words is capable of trademark significance, if used in such a way as to identify and distinguish the seller's goods and services from those of others.  McCarthy on Trademarks and Unfair Competition § 7:20 (5th ed.)
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• A “slogan” is usually defined as an advertising phrase which accompanies other marks such as house marks and product line marks. McCarthy on Trademarks and Unfair Competition § 7:19 (5th ed.)
• [A] Phrase that has been part of the American vernacular for decades makes for a very weak trademark. Servpro Indus. Inc. v. Zerorez of Phoenix LLC, 339 F. Supp. 3d 898 (D. Ariz. 2018)

Trademark Slogan Examples NOT Trademark-able

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 trademarks. 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).

Examples of slogans that are not easily trademark-able: 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(a ):

A trademark comprises a word, name, symbol, device, or combination thereof that is used to identify the goods of an applicant, to distinguish them from the goods of others, and to indicate the source of the goods. Trademark Act §§1-2, 45, 15 U.S.C. §§1051-1052,  1127; see TMEP §1202. Similar to a trademark, a model or grade designation is generally comprised of numbers or letters, or a combination thereof. However, the manner of use, and resulting commercial impression imparted by the matter, differentiate a mere model or grade designation from that of a trademark (or a dual-purpose mark that is both a model or grade designation and a trademark). While letters, numbers, or alphanumeric matter may serve as both a trademark and a model or grade designation, matter used merely as a model or grade designation serves only to differentiate between different products within a product line or delineate levels of quality, and does not indicate source. See Eastman Kodak Co. v. Bell & Howell Document Mgmt. Prods. Co., 994 F.2d 1569, 1576, 26 USPQ2d 1912, 1919 (Fed. Cir. 1993); Neapco Inc. v. Dana Corp., 12 USPQ2d 1746, 1748 (TTAB 1989); 1 Anne Gilson LaLonde, Gilson on Trademarks §2.03(4)(a) (Matthew Bender 2011); J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §11.36 (4th ed. 2011).

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.”

Trademark Checklist

1. Check Inherent Strength  Does your trademark consist of inherently distinctive element(s) that can be claimed for exclusive use?

Marks that are merely descriptive (or worse, generic) are hard to register and hard to protect. Section 2(e) refusals are very common refusals. Whether a trademark is merely descriptive depends on the goods and services description.

2. Check Right to Use  

Does the trademark have a likelihood of confusion with prior-used trademarks (registered or unregistered)?

Likelihood of confusion refusals are very common refusals and lead to many trademark applications going abandoned.

3. Check Right to Register  Does the trademark meet the USPTO rules of registration? (Does not have any grounds for refusal?)

4. Check Specimen  Is the trademark used as a trademark or service mark in the specimen?

Specimen refusals are very common refusals. The right type of specimen for any particular application depends on what the goods or services are.

5. Check Goods and Services ID   Is the goods/services identification JUST RIGHT?  Definite and accurate? Is the services ID as broad as it should be under the circumstances or will a narrower description distinguish it better?

ID refusals are common too but getting the right description identifies the scope of protection. Too narrow of a description can yield narrow rights. Too broad of a description can result in an unnecessary likelihood of confusion with someone else.

6. Check which application form is the best for your trademark application. TEAS Plus? TEAS Standard?

Need help? Call 1-651-500-7590 or email  W@TMK.law.

Go Beyond Just Trademarkable To A Strong Mark: Aim Higher

Do you know the answers to these questions?

• Can I claim exclusive rights to use this trademark?
• Does this trademark meet the qualifications for being registered on the USPTO Principal Register? Is it trademarkable?
• Is this trademark strong enough that others would want to license it from me?
• Does this trademark have potential to extend to other product lines?
• Is this mark inherently distinctive?
• Are there others users of this mark that could prevent me from using this mark or would sue me or prevent me from getting federal registration because they can prove they are prior users?
• Are there valid reasons for someone to oppose or cancel the mark because the mark doesn’t qualify for protection or because they have superior rights?
• Would the USPTO find a likelihood of confusion with someone else’s registered or pending trademark and prevent my registration of this mark?
• Would a court enforce the use of this trademark?
• Do I have to somehow acquire distinctiveness for this mark before it would be recognized as being trademarkable?
• Does this mark use such common terms that it would be called a weak trademark?
• Is this mark descriptive or deceptive or geographically descriptive?
• Do I use the mark in a way that increases my rights or am I using it in a way where it does not function as a trademark?

Don’t assume that protecting your reputation and legal rights is too expensive, abandoning your trademark registration because of problems from office actions and refusals may result in a larger losses-loss of assumption of authenticity, loss of the right to protect from counterfeits, and loss of reputation. In today’s economy (and for the future), Intellectual Property Protection may be one of the best ways to invest in your business. Call us with questions at 1-651-500-7590.  

Not Just Patents® and AIM  HIGHER® are federally registered trademarks of Not Just Patents LLC.

“The Weiner the World Awaited” for bacon held a valid trademark

In re E. Kahn's Sons Co., 343 F.2d 475, 145 U.S.P.Q. 215 (C.C.P.A. 1965)

“You are in good hands with ALLSTATE” protected even in noncompetitive product area

Ex parte Deering, Milliken & Co., 109 U.S.P.Q. 69, 70 (Comm'r Pat. 1956); Allstate Ins. Co. v. Allstate Inc., 307 F. Supp. 1161, 163 U.S.P.Q. 597 (N.D. Tex. 1969)

BUDWEISER beer slogan “The King of Beers” held infringed by “The Beer of Beers”

Anheuser-Busch, Inc. v. Customer Co., 947 F. Supp. 422, 39 U.S.P.Q.2d 1850 (N.D. Cal. 1996)

“[E]specially in the field of such goods marketed as souvenirs, the marketplace is awash in products that display the term I <<heart>> DC as a prominent ornamental feature of such goods, in such a way that the display itself is an important component of the product and customers purchase the product precisely because it is ornamented with a display of the term in an informational manner, not associated with a particular source.”

D.C. One Wholesaler, Inc., 120 U.S.P.Q.2d 1710 (TTAB 2016)

ONCE A MARINE, ALWAYS A MARINE

In Re Eagle Crest, Inc., 96 U.S.P.Q.2d 1227 (TTAB 2010)

Board held that the phrase WATCH THAT CHILD for construction material would be perceived merely as an expression of general concern about child safety that does not function as mark

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

AMERICA’S FRESHEST ICE CREAM for flavored ices, ice cream, etc., incapable of distinguishing applicant’s goods and unregistrable on the Supplemental Register

In re Carvel Corp., 223 USPQ 65 (TTAB 1984)

 WHY PAY MORE! for supermarket services to be an unregistrable common commercial phrase

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

Phrase “we buy houses,” as used by company engaged in business of buying and selling houses, was generic, and thus company's registered “we buy houses” and “webuyhouses.com” marks were not entitled to federal trademark protection, where phrase was used extensively on internet and in newspapers by third parties to connote class of services provided, rather than specific source of those services, previous owners of marks used “we buy houses” as generic description of services they offered, not to identify source of services, and there was no evidence that mark had become distinctive through secondary meaning.

Express Homebuyers USA, LLC v. WBH Mktg. Inc., 323 F. Supp. 3d 784 (E.D. Va. 2018), reconsideration denied, No. 1:17-CV-736, 2018 WL 6616675 (E.D. Va. Aug. 29, 2018)

Merely informational matter:

• Matter that is used in a manner merely to convey information about the goods/services;

• Matter that is commonly used in everyday speech by many different sources and merely conveys an informational social, political, religious, or similar kind of message (referred to in this guide as a “widely used message”); and

• Matter that constitutes a direct quotation, passage, and/or citation from a religious text used to convey affiliation, support, or endorsement of the religious message

§ 2:141.Trademark examination guide—Merely informational matter, 1A Lindey on Entertainment, Publ. & the Arts § 2:141 (3d ed.)

TMk® Email W@TMK.law best or call 1-651-500-7590   (Calls are screened for ‘trademark’ and other applicable reasons for the call) for U.S. Licensed Attorney for Trademark Searches and Applications; File or Defend an Opposition or Cancellation; File or Defend an Expungement or Reexamination of a trademark registration; Trademark Refusal; Brand Positioning

For more information from Not Just Patents, see our other pages and sites:      

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Trademark e Search  Strong Trademark  

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Tm1a.com: Why 1(a)? Tm1b.com: Why 1(b) trademark?

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Are You a Content Provider-How to Pick an ID  Specimens: webpages

Self-authenticating specimen?  How many days to register?

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Using Slogans (Taglines), Model Numbers as Trademarks

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Change Trademark or Patent Ownership    

 Opposition Proceeding    

TTAB Discovery Conference Checklist

Lack of standing is not an Affirmative Defense

Trademark Register FAQ  Definition: Clearance Search

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Amend to Supplemental Register?

Trademark Search Hack-Use the same method as USPTO   

Experience appearing before the Board (TTAB)

Trademark Specimen  Statement of Use (SOU)

How To Show Acquired Distinctiveness Under 2(f)

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TEAS Plus refusal rate  tesssearch  Brand Positioning Help

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 Examples and General Rules for Likelihood of Confusion

   DuPont Factors

What are Dead or Abandoned Trademarks?

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3D Marks Trade Dress TTAB Extension of Time  

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Extension of Time to Oppose

 tess search  Examples of Unusual Trademarks

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What Does Published for Opposition Mean?

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Overcoming Merely Descriptive Refusal  TmkApp Checklist

Likelihood of Confusion 2d  TMK.law–Knowing the law matters

Acquired Distinctiveness Examples  2(f) or 2(f) in part

Definition: Likelihood of confusion

Merely Descriptive Trademarks  Merely Descriptive Refusals

Definition of Related goods and services for trademarks

ID of Goods and Services see also Headings (list) of International Trademark Classes How to search ID Manual

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Geographically Descriptive or Deceptive

Change of Address with the TTAB using ESTTA

Likelihood of confusion-Circuit Court tests  Trademark Glossary

Pseudo Marks    How to Reply to Cease and Desist Letter

Why Hire A Private Trademark Attorney?

 Merely Descriptive Refusal   Overcome Likelihood Confusion

Common Law Rights for Domain Names

Steps in a Trademark Opposition Process   

Published for Opposition  What is Discoverable in a TTAB Proceeding Affirmative Defenses  

What is the Difference between Principal & Supplemental Register?   

What is a Family of Marks? What If Someone Files An Opposition Against My Trademark? Statutory Cause of Action (aka Standing)

Tips for responding to tm Refusal  

DIY Overcoming Merely Descriptive Refusals

TESS Trademark Trademark Registration Answers TESS database  

Trademark Searching Using TESS  Trademark Search Tips

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