Following every National Football League (NFL) Super Bowl since 1987, despite the celebratory chaos and clamor that surrounds the winning team and their fans, the Super Bowl’s Most Valuable Player (MVP) has been tracked down and asked this crucial question, “What are you going to do next?” The legendary answer? “I’m going to Disney World!” (or “I’m going to Disneyland!”). Last Sunday, after the New York Giants defeated the New England Patriots in Super Bowl XLVI, Giants quarterback Eli Manning turned to a camera and engaged in the now famous exchange. It must have been deja vu for Eli Manning since he uttered the same words just
a few years earlier following his team’s win and his receipt of the MVP award in Super Bowl XLII. Coincidentally, it was another Giants’ quarterback,
Phil Simms, who was the first Super Bowl MVP to say “I’m going to Disney World” in 1987. Since that time, iconic MVPs such as Doug Williams (Washington Redskins),
Joe Montana (San Francisco 49ers), Troy Aikman (Dallas Cowboys), and
Drew Brees (New Orleans Saints), among others, have exclaimed the famous answer.
Hearing that famous phrase last Sunday reminded us of the importance of understanding how and
when slogans and phrases are protectable as
trademarks. We note that “I’m going to Disney World” is not a federally registered trademark. There are, however, a number of phrases and slogans registered with the U.S.
Patent & Trademark Office. Here are a few examples:
“WHERE’S THE BEEF?” (Wendy’s International, Inc.)
“JUST DO IT.” (Nike, Inc.)
“MELTS IN YOUR MOUTH NOT IN YOUR HAND” (Mars, Inc.)
“GOT MILK” (The Dairy Association)
Broadly speaking, a slogan or phrase is protectable if it is used in a manner that identifies and distinguishes goods or services from the goods or services of others. Thus the listed examples are protected because, when you see or hear “WHERE’S THE BEEF” – you think of Wendy’s (as opposed to McDonalds). When you see or hear “JUST DO IT” – you think of Nike (not Reebok). The same goes for the famous slogans promoting M&M’s and milk.
The Lanham Act defines a trademark as “…any word, name, symbol, or device, or any combination thereof–(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if the source is unknown.” 15 U.S.C. § 1127. Thus, a slogan or phrase, i.e., any combination of words — can qualify for protection as a trademark under the federal statute (however, as discussed below, protection is not available if the slogan or phrase is merely informational, laudatory or descriptive, although in the case of a descriptive slogan or phrase it can be protected if it has acquired secondary meaning).
A slogan or phrase that does not identify the source of the goods or services or does not distinguish the goods or services from others is not protectable. Courts examine the nature and context of usage to determine whether a slogan or phrase is entitled to protection. An example arose in MicroStrategy Inc. v. Motorola Inc., 245 F.3d 335 (4th Cir. 2001). In 2000, Motorola sought to register the mark “Intelligence Everywhere” for a variety of products and services. In January 2001, MicroStrategy notified Motorola that it had used “Intelligence Everywhere” as a trademark since “at least as early as 1998.” MicroStrategy claimed to possess common law trademark rights to the phrase (it had not yet filed an application for a federal registration) and informed Motorola that its intended use would constitute trademark infringement. Motorola balked at MicroStrategy’s demand, forced MicroStrategy to file its own trademark application for “Intelligence Everywhere” and to file an infringement action against Motorola in the U.S. District Court for the Eastern District of Virginia. In the civil action, MicroStrategy alleged not only trademark infringement, but also trademark dilution and cybersquatting. MicroStrategy sought a preliminary injunction to bar Motorola from its intended use of “Intelligence Everywhere.” The district court denied the preliminary injunction and MicroStrategy sought an expedited appeal to the U.S. Court of Appeals for the Fourth Circuit.
A three judge panel of the Fourth Circuit upheld the district court’s ruling. For purposes of this post, we will not discuss every aspect of the panel’s opinion. In relevant part, the panel held that MicroStrategy had “failed to demonstrate” use of the phrase sufficient “to identify MicroStrategy as the source of its goods or services.” MicroStrategy’s use of the phrase did not utilize a “particular design or sequence,” appearing, instead, “sometimes” on the cover and sometimes “in the midst of text.” MicroStrategy also did not employ “any ‘constant pattern’ or design” highlighting or featuring the phrase. In other words, MicroStrategy did not take sufficient steps to use the phrase as a trademark.
The panel also took note of MicroStrategy’s portfolio of registered marks. Specifically, MicroStrategy did not use “Intelligence Everywhere” in the same manner as it had used other registered marks, such as “Intelligent Business.” MicroStrategy did not use a trademark designation (e.g., TM), or distinctive fonts or colors. Simply put, MicroStrategy did not use “Intelligence Everywhere” in a manner to identify the source of its goods or services or to distinguish its goods or services from others. The phrase simply did not function as a trademark.
Slogans and phrases are also not protectable, regardless of the manner of use, if they are simply informational, laudatory, or descriptive — although descriptive slogans and phrases can be protected after they have acquired secondary meaning (discussed below). For example, the phrase THE BEST BEER IN AMERICA (In re Boston Beer Co. L.P., 198 F.3d 1370 (Fed. Cir. 1999)) was held incapable of trademark protection because it was laudatory and descriptive. Other examples of slogans and phrases that have been found not to be protectable include AMERICA’S FRESHEST ICE CREAM (In re Carvel Corp., 223 U.S.P.Q. 65 (T.T.A.B. 1984)), WHY PAY MORE! (In re Wakefern Food Corp., 222 U.S.P.Q. 76 (T.T.A.B. 1984)) and AMERICA’S BEST POPCORN (In re Wileswood, 201 U.S.P.Q. 400 (T.T.A.B. 1978)). As explained in
Boston Beer, “Marks that are merely laudatory and descriptive of the alleged merit of a product are also regarded as being descriptive․ Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods.”
Boston Beer, 198 F.3d at 1373 (quoting 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:17 (4th ed. 1996) (internal quotations omitted)).
Ordinary slogans and phrases also do not qualify to receive trademark protection. For example, the phrase DRIVE SAFELY was held to be similar to “Have a nice day” or “Don’t Worry” and thus not worthy of protection. In re Volvo Cars of North America, Inc., 46 U.S.P.Q.2d 1245 (7th Cir. 2001).
Some descriptive slogans and phrases can be protectableif they have acquired “secondary meaning.” “Secondary meaning” is acquired when, in the minds of the public, the slogan or phrase is associated with a single source. For example, THE GREATEST SHOW ON EARTH was held to be protectable because the owner, Ringling Bros.-Barnum & Bailey, had established secondary meaning through extensive advertising (millions of dollars), length of use (over an extended period of time), and scope of use (numerous shows and performances).
Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Celozz-Ettelson Chevrolet Inc., 855 F.2d 480 (7th Cir. 1988). We believe that the different outcomes in the
Boston Beer and
Ringling Bros. cases is attributable to the fact that the phrase in
Ringling Bros. was at least partially suggestive, whereas the phrase in
Boston Beer was merely descriptive. In
Boston Beer, the court held that the phrase THE BEST BEER IN AMERICA “is so highly laudatory and descriptive of the qualities of its product that the slogan does not and could not function as a trademark to distinguish Boston Beer’s goods and serve as an indication of origin.”Boston Beer, 198 F.3d at 1373.
Ownership Disputes
Disputes sometimes arise over who owns a slogan or phrase – is it the advertising firm that produced it or the company that hired them to produce it? In the context of trademark protection, the key consideration is the identity of the source that the mark signifies. While an advertising firm may create the slogan or phrase, it is the firm’s client that benefits from it and becomes the source signified by the slogan or phrase. See,
e.g.,
American Express Co.
v.
Goetz
and Gardner Design Group, LLC, 515 F.3d 156 (2d Cir. 2008) (“The Patent and Trademark Office’s Trademark Trial and Appeal Board has long recognized, in such situations, that the slogans cannot be registered as marks by the advertising agency, even if they would be subject to registration by the end users of the marks.”);
In re Admark Inc., 214 U.S.P.Q. 302 (T.T.A.B. 1982);
In re Adver & Mktg. Dev., Inc., 821 F.2d 614 (Fed. Cir. 1987);
In re Local Trademarks, Inc., 220 U.S.P.Q. 728 (T.T.A.B. 1983).
The Benefits of Careful Planning and Strategy
The key to protecting slogans or phrases as trademarks is the manner of their
use. The slogan or phrase must be used in a way that identifies the goods in connection with which it is used as being the goods of the user and the phrase or slogan must be used in a manner that distinguishes the user’s goods from the goods of others. In other words, the slogan or phrase should be used in a distinctive manner, utilizing uniform and distinctive fonts, colors or typesetting, and it should be prominently incorporated in marketing and advertising materials.
As with any other trademark, we recommend involving trademark counsel at the earliest possible stage when considering adopting a slogan or phrase as a trademark. Trademark counsel can evaluate the proposed slogan or phrase (e.g., to determine whether it is possible to protect as a trademark) and recommend uses that may be beneficial in securing common law trademark protection and a registration with the U.S. Patent & Trademark Office.
