TMEP 1213.05(b)(i): Slogans

October 2017 Edition of the TMEP

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1213.05(b)(i)    Slogans

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.

However, if a mark consists entirely of a slogan that is generic, merely descriptive, merely informational, or that is otherwise not being used as a mark, registration must be refused. See In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (holding 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 Wakefern Food Corp., 222 USPQ 76 (TTAB 1984) (holding WHY PAY MORE! for supermarket services to be an unregistrable common commercial phrase); see TMEP 1213.05(b)(iii).

If an unregistrable slogan is a component of a mark with registrable matter, the examining attorney must require that the slogan be disclaimed.