Can You Protect Your Slogan?

By:  Bert Andia, Member, Higgins Benjamin, PLLCYou’ve come up with a great new slogan that you want to print on t-shirts, sweatshirts, coffee cups and other products.  Now you want to know how to stop others from using that same slogan.  You think you remember hearing that Pat Riley had gotten a copyright on the word “THREEPEAT” before his team won the NBA Championship for a third consecutive time?  How was that possible?

There are two possible ways you might think about to protect a slogan – copyright and trademark.  A copyright protects works of authorship.  A trademark is a distinctive word or phrase that is affixed to an article to identify a single source for the goods.

The issue regarding copyright protection for a slogan or word is straightforward – the answer is NO.  Federal copyright law and the common law only provide copyright protection to “original” works of authorship.  The term “original” is not specifically defined, but is recognized as calling for “independent creation” and not novelty.   Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 910 (2d Cir. 1980); E. Mishan & Sons, Inc. v. Marycana, Inc., 662 F. Supp. 1339 (S.D.N.Y. 1987): Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49 (2d Cir.), cert. denied, 298 U.S. 669, 80 L. Ed. 1392, 56 S. Ct. 835 (1936)(L. Hand, J.).

There are, however, admittedly “independent creations” that are deemed too trivial or insignificant to support copyright protection because they lack a minimal standard of “creativity.”  The minimum amount of creativity is illustrated by the Copyright Office Regulations under the 1909 Copyright Act, which provided that “[w]ords and short phrases such as names, titles, and slogans” are not subject to copyright.  That regulation continues to the present day.  Under that rationale, a word or phrase – no matter how original – cannot be protected by copyright.

A brief review of the trademark database reveals that it is most likely that Pat Riley did not obtain copyright protection, but instead registered a trademark in the word “THREEPEAT.”  United States Registration No. 4,051,757 issued on November 8, 2011 to Riles & Company, Inc. for the mark “THREEPEAT” for use on “hats; jackets; [and] shirts.”

Obtaining trademark registration for the word THREEPEAT was not accomplished without some difficulty.  The law recognizes that not every word or slogan functions as a trademark.  The Trademark Office will refuse to register subject matter that is merely a decorative feature that does not function as a trademark (because it does not distinguish the applicant’s goods).  The decorative feature may be words, designs, or slogans.  For example, the Trademark Office refused to register “YOU ARE SPECIAL TODAY” as a trademark for ceramic plates and refused to register “DAMN I’M GOOD” as a trademark for bracelets.  The slogans were seen as conveying a message rather than indicating the source of the goods.  In re Original Red Plate Co., 223 USPQ 836 (TTAB 1984); Damn I’m Good, Inc. v. Sakowitz, Inc., 514 F.Supp. 1357 (S.D.N.Y. 1981).  With respect to clothing, the Trademark Office recognized that consumers recognize small designs or discrete wording as trademarks if placed, for example, on the pocket area of a shirt; however, consumers do not typically perceive larger designs or slogans when such matter is displayed, for example, on the upper half of a shirt.

Based on that same rationale, the Trademark Office would not have registered “THREEPEAT”
because the mark was merely a decorative or ornamental feature of the goods.

However, the inquiry does not end there.  Usually, the Trademark Office will then inquire as to whether the slogan has been used in commerce and has become distinctive.  This is called “secondary meaning”; the question is whether the slogan transcends the literal meaning of the words and is now associated by consumers with the source of the goods.  Typically, this can be shown by demonstrating five years of continuous use in commerce or by significant sales and advertising with the slogan.

Pat Riley was able to register his slogan because, in part, he demonstrated that he had been using the slogan as a trademark for over twenty years (note that the application was filed in 2010, and that Coach Riley claims to have coined the phrase after the Los Angeles Laker had won championships in 1987 and 1988).

Thus, protection of a slogan through common law or federal trademark law will largely depend on whether you can demonstrate that the mark has acquired significance in the minds of consumers through either continuous use for more than five years or though significant advertising of the slogan.

For more information on how to protect your copyright and trademarks contact Bert Andia at Higgins Benjamin PLLC (336)273-1600.