October 2007

Protecting Slogans

No Copyright Protection for Slogans

The United States Copyright office regulations do not allow for copyright registration of “short phrases” and “slogans.” This area of protection is left to the trademark laws.

Trademark Protection

The United States Patent and Trademark Office (USPTO) has strict regulations regarding whether a slogan can become a registered mark. It depends on whether or not the slogan is being used in the same manner as the mark to identify the source of the goods or services or if it is merely informational or generic and thus not capable of distinguishing the particular product or service from that of another. Additionally, unless the slogan is in itself inherently distinctive and qualifies as a mark in itself, the USPTO requires that the slogan be identified with the product or service so that the consuming public relates the slogan to the particular product or service. This requirement means that the slogan has developed what the law refers to as a “secondary meaning.”

Even if a slogan does not rise to the level of being protectable under federal registration guidelines, the law protects slogans in other ways. There are rights of trademark that are based on common law principles and unfair competition. Thus, even if the slogan is not the subject of a federal registration, it can be protectable upon a showing of such secondary meaning.

Secondary Meaning

A slogan which is descriptive of the goods or services with which it is used can be protected or registered only where secondary meaning is shown. A slogan acquires a secondary meaning when it has been used in such a way that its primary significance in the minds of the prospective purchasers is not the product/service itself but the identification of the product/service with a single source. In this regard slogans are treated the same as other word marks. Similarly, slogans which are arbitrary or only suggestive in nature are protectible without a showing of secondary meaning.

Distinctiveness Requirement

The requirement of distinctiveness occasionally disqualifies a slogan from legal protection or results in very narrow protection. One of the problems unique to slogans is that many were designed primarily to sell more products, and not to identify the advertiser or distinguish its goods from others.

Trademark or Service Mark Symbols

Slogans frequently accompany product and service advertising. While the product or service bears a superscripted “R” in a circle, the symbol for a registered trademark, the slogan bears a superscripted “TM” or “SM,” the symbols for claims to trademarks that are not registered. The use of the ™ symbol is merely an assertion by the advertiser that they are treating the line as a trademark. It does not assure any legal right. For legal protection, the line must be registered with the appropriate government trademark office, which then confers the right to use the registered symbol “(r)” and then they get the full protection of the law against poaching.

Well Known Slogans

A few well-known examples of slogans include:

  • American Express: “Don’t leave home without it”
  • Apple: “Think different”
  • AT&T: “Reach out and touch someone”
  • Avis: “We try harder”
  • Budweiser: “The king of beers”
  • Clairol: “Does she or doesn’t she?”
  • Burger King: “Have it your way”
  • Maxwell House: “Good to the last drop”
  • Timex: “Takes a licking and keeps on ticking”
  • Wendy’s: “Where’s the beef?”
  • Wheaties: “The breakfast of champions”

Protecting Slogans

Protecting slogans is often a very difficult proposition. However, from the marketing as well as the legal standpoint, the more that slogans are used in close association with a product or service, the more weight such use may carry over time in terms of the trademark registration process. The user of the slogan should keep detailed records and notes as well as copies of all uses of the slogan in order to document claims of “secondary meaning,” both for purposes of federal registration as well as its claims under unfair competition and common law trademark laws.


Protecting Trade Names

Contrary to popular myth, a registered trade name is NOT a registered trademark. This is often an area of confusion among new businesses. Registration of a trade name with the Secretary of State does not mean that the trade name will not infring another’s trademark. The term ”trade name” generally means any name used by a person to identify his or her business or vocation. ”Trade name” refers mainly to the corporate, partnership or other name of a business. The business may, in turn, market goods or services under one or more trademarks or service marks.

Examples of Trade Names

  • ”General Motors Corporation” is used as the trade name of the business that sells products under the trademark CADILLAC.
  • “Kraft Foods, Inc.” is used as the trade name of the business that markets JELL-O(r) desserts and Kool Bursts(r) juice drinks.

Selling, Assigning or Terminating a Trade Name

Trade names can be sold or assigned to another company. When a company is dissolved, terminated, or withdrawn, the trade names owned by that company are terminated.

Trade Name Registration

There is no provision under the Lanham Act (federal law related to trademarks) for federal registration of trade names, but they may be registered as trademarks if they are used as trademarks. If a business is using a trade name in connection with a good or service, the business should conduct a trademark clearance search to ensure that a trade name is not infringing the rights of others. To obtain nationwide trademark protection, the mark should also be registered with the U.S. Patent and Trademark Office in Washington. Trade names may also be registered in the state in which the person or company is based. The law sets no limits on the number of trade names which may be registered by one person or company.


Patents and Trade Secrets

Research and development information that is maintained subject to the appropriate safeguards is protectable as a trade secret. Whether or not an invention is patentable is another matter. In a patent application the inventor needs to (a) describe the invention, (b) provide sufficient information to enable one skilled in the art to use it and (c) describe the best modes of practicing the claimed invention as well as describe the actual claims made. The application is then received and processed by the United States Patent and Trademark Office. That procedure takes anywhere from many months to several years. The critical issue of disclosure of the best mode known to the applicant is measured at the time of the application. Thus, improvements in making or using the invention that occur after application can be maintained in secret.

Patents in Relation to Trade Secrets

The inventor of matter eligible for patent protection must elect whether to avail himself or herself of such protection, accepting the attendant obligations, or whether to retain the matter as a secret, relying upon the protection extended to trade secrets by the common law and by certain statutes. Certain situations indicate a clear advantage in one form of protection over the other. For instance, if the discovery is to be embodied in a product that will be sold, patent protection would probably be the better choice.

Necessity of Exercising Option

The existence of the option between trade secret or patent protection means only that initially the discoverer may choose one or the other. Although patent and trade secret protection may be simultaneously available for related components of an article or steps in a process, one may not rely upon both forms of protection as to the same matter. A patent constitutes a public disclosure of matter expressed in it which was formerly a trade secret. Conversely, use of secret matter eligible for patent protection probably constitutes a ”public use” in the patent law sense. If such use exceeds the permissible statutory period of one year prior to application for a patent, it would bar the user’s right to a patent.

One who suppresses an invention may not only forfeit the right to a patent, but might also lose the status as ”first inventor” for purposes of opposing a patent application of a subsequent inventor. Thus, a claim of trade secret and patent protection for the same matter is inherently inconsistent if the matter is published, and open to intense fact scrutiny if the matter held as a trade secret by the first ”true” inventor is asserted against a later ”inventor” of the same subject matter.

Secret use of a patentable invention raises an inherent question as to whether such use constitutes ”concealment” or ”suppression.” If it does, a subsequent inventor may be eligible to receive a patent although such a subsequent invention cannot meet the novelty test of the Patent Act. Thus, a second person to invent something may get a patent over the opposition of the first inventor if the latter made the invention in the United States and suppressed or concealed the invention. Yet the same second person may be denied a patent if the first inventor published the invention in some obscure journal prior to the second’s claimed invention date, provided that the one could reasonably locate the prior art reference. In both situations, the second inventor has not invented something novel and was equally unaware of the first inventor’s work.

Requirement of Disclosure in Exchange for Patent Monopoly

The patent monopoly conferred upon the inventor is given in exchange for the full disclosure and public dedication of new and useful invention. Disclosure of the invention, and of the manner and process of making and using it, must be made in clear and concise terms so that any person skilled in the art could make and use it; the disclosure should indicate the best mode contemplated by the inventor for carrying out his invention. Given the statutory requirement of full disclosure, attempting to secure a patent and yet withhold statutorily-required information as a trade secret would appear to jeopardize the validity of any patent that issues on the basis of such application. On the other hand, retention of information related to a patent but not required to be disclosed as a trade secret is permissible.

Level of Invention Required for Patent

The standard for patent protection is more exacting than that required for trade secret protection. Matter which is not patentable may nonetheless be maintained as a trade secret.Risk of Loss

A patent provides protection against innocent as well as willful infringement. Thus, unlike the owner of a trade secret, a patent holder can redress infringement even against one who innocently practices the invention. Additionally, the patent owner’s right to prevent all others from making, using, or selling the patented invention lasts for the duration of the patent regardless of how many infringers there are. Proliferation of use of trade secret matter will extinguish the protected status which is based upon secrecy and once the patent expires, protection ceases. By contrast, trade secret protection is of indeterminate duration because it lasts until the matter becomes generally known.

Trade Secret Protection of Matter for Which a Patent Application is Pending

Protection afforded under the patent laws does not commence until the patent is granted, the grant is deemed to put the world on notice of the patentee’s claims. Yet there is always some period of time between the date of filing and the issuance of a patent. Prior to the grant of patents, trade secret protection applies if the matter otherwise meets trade secret standards. Consequently, wrongful use or disclosure of secret matter, even though that matter will be disclosed by the patent, prior to the issuance of the patent is actionable. Recovery for such wrongful use or disclosure is entirely independent of whether the patent application ripens into a valid patent or if the patent subsequently proves unenforceable.


Patents with Distinctive Claims

When filing a patent, a patent application must include one or more claims which particularly point out and distinctly claim the subject matter which the applicant regards as his or her invention. Patent claims serve two functions. First, they define the invention for the purpose of applying the conditions of patentability, the statutory bars, and the disclosure requirements. Second, they define the invention for the purpose of determining infringement.

Definiteness

Claims must be particular and distinct. The primary purpose of this requirement of definiteness in claims is to provide clear warning to others as to what constitutes infringement of the patent. Another purpose is to provide a clear measure of the invention in order to facilitate determinations of patentability.

On occasion courts have failed to distinguish the definiteness requirement, which claims must meet, from the enablement requirement, which the specification disclosures must meet. However, the two requirements are distinct. A patent specification may sufficiently teach how to make and use the invention yet fail to claim it with sufficient particularity.

The definiteness standard is one of reasonableness under the circumstances. It is whether, in the light of the teachings of the prior art and of the particular invention, the claims set out and circumscribe a particular area with a reasonable degree of precision and particularity. A clear claim can be rejected as for something other than what the applicant ”regards” as his or her invention only if some material submitted by the applicant, other than the applicant’s specification, shows that the claim does not correspond in scope with what the applicant regards as the invention.


Copyright and Fair Use

The United States Copyright law represents a bargain between creators and the public. Congress granted certain exclusive rights to creators and authors for a limited time period; in exchange, the public receives an increase in creative works and expressive ideas that benefit society as a whole. As part of the bargain, U.S. copyright law recognizes some limitations on the exclusive rights of copyright holders. One of the most important limitations is the doctrine of fair use, which was developed over the years as courts tried to balance the rights of copyright owners with society’s interest in allowing copying in certain, limited circumstances. Although the doctrine of fair use was originally created by the judiciary, it is now set forth in the Copyright Act. A use of a copyrighted work that is considered to be “fair use” is not infringement. Although there are no automatic classes of fair uses, courts tend to find fair use where there is a socially beneficial use of a copyrighted work.

Section 107 of the Copyright Act of 1976

Although the fair use defense was available for many years, the doctrine was first codified by Congress in Section 107 of the Copyright Act of 1976. Section 107 gives a non-exhaustive list of examples of when the fair use defense might be successful. The list includes criticism, comment, scholarship, research, news reporting, and teaching as uses that may be fair. The list also gives four guiding factors courts consider in deciding whether a use is fair or not.

Four Factors

Under the Copyright Act, four factors are to be considered in order to determine whether a specific action is to be considered a “fair use.” Courts consider all four of the following factors when analyzing fair use cases; no single factor by itself is sufficient to prove or disprove fair use:

  1. the purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes;
  2. the nature of the copyrighted work;
  3. the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  4. the effect of the use upon the potential market for or value of the copyrighted work.

Purpose and Character of Use

The first fair use factor, the purpose and character of use of the original copyrighted work, evaluates a new work by taking into consideration whether it was created for commercial purposes. Not every commercial use is presumptively an unfair use, but there is a preference that fair use will be granted to those works that are created for noncommercial or educational purposes. Additionally, courts determine whether the new work has a different purpose or different character than that of the original copyrighted work.

Nature of Copyrighted Work

The second fair use factor is the nature of the copyrighted work. This factor recognizes that certain types of works are more deserving of copyright protection than other types of works. The scope of fair use is greater for an “informational work” that is designed to inform or educate than it is for a more “creative work.”

 

Amount and Substantiality of the Portion Used of the Copyrighted Work

The third fair use factor analyzes the amount and substantiality of the copying in relation to the copyrighted work as a whole. The vital determination is whether the quality and value of the material copied from the original copyrighted work is “reasonable” in relation to the purpose of copying. This factor evaluates not only the quantity that has been copied but also the quality and importance of the copied material. The courts evaluate whether the user of the original copyrighted material has taken more of the original work than was necessary to achieve the purpose for which the material was copied.

Effect Upon Potential Market or Value of the Copyrighted Work

The fourth fair use factor, the effect upon the potential market or value of the copyrighted work, analyzes the extent of harm that is caused by the new work to the market or potential market for the original copyrighted work. This factor evaluates the “potential” as well as “actual” financial harm that is or may be done to the original copyrighted work as well any harm that may be caused to any existing or possible future derivative works. Although this factor does not presume that all commercial gain will automatically be an unfair use, it does establish a high threshold of proof for the copier to demonstrate that the underlying work was not financially damaged.

Fair Use Activities

Most fair use analysis falls into two categories — commentary and criticism or parody. The underlying rationale of allowing copyrighted works to be used as part of a commentary or criticism is that the public benefits from a review, which is enhanced by including some of the copyrighted material. A parody is a work that ridicules another, usually well-known work, by imitating it in a comic way. Unlike other forms of fair use, a fairly extensive use of the original work is permitted in a parody in order to “conjure up” the original.

The following are some traditional activities where the fair use doctrine has been held to apply:

  • small excerpts in a review or criticism for purposes of illustration or comment
  • a parody which incorporates some, but not all, elements of the work being parodied
  • quotations from a speech, address, or position paper in a news report
  • limited copying made by a student for academic work.

The following are some nontraditional activities where the fair use doctrine may apply:

  • time-shifting, or private, noncommercial home taping of television programs with a VCR to permit later viewing
  • format shifting of content owned by a consumer in one format, such as an audio CD, to another format, such as MP3, for the consumer’s own personal use.

 

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