Advertising slogans are a powerful way of conveying messages. Who isn’t familiar with THE BREAKFAST OF CHAMPIONS, GOOD TO THE LAST DROP, or FLY THE FRIENDLY SKIES? Companies spend vast sums to promote their slogans, hoping they will become famous and instantly bring to mind the companies’ goods and services. A successfully promoted slogan will often be associated in the public mind with a single source for the goods or services – in that way functioning as a trademark.
Slogans are protectable as trademarks. The Trademark Act defines a trademark as including “any word, name, symbol, or device” that is used by a person “to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods . . .” Many famous slogans have been registered as trademarks in the Patent and Trademark Office, including the three mentioned at the beginning of this post. However, slogan marks can present unique issues in trademark law.
In May, the Second Circuit decided Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013), reversing dismissal of a small businesswoman’s slogan-trademark infringement suit against Oprah Winfrey and her companies. The decision involves several interesting legal rulings, and highlights issues that often arise concerning use of advertising slogans as trademarks – both for those seeking to protect their own slogans as trademarks, and for those who might use slogans similar to others’.
The Winfrey Decision
Simone Kelly-Brown owns a “motivational services business” and registered the “Own Your Power” slogan service mark. She charged that Oprah Winfrey and her companies promoted a magazine, held events and conducted internet advertising, all using that same phrase, thereby committing trademark infringement and unfair competition under federal and state law.
The district court dismissed her claims at the pleading stage, because (a) it held that Winfrey and her companies did not use the phrase “as a trademark” and (b) the use was protected as fair use. Both rulings were reversed.
Use “As A Trademark” Distinguished From “Use In Commerce”
The district court ruled that because the magazine and events prominently featured both Oprah Winfrey and her own related trademark (“O, the Oprah Magazine”) there was no use of the Own Your Power phrase “as a trademark” – it merely functioned as a headline or slogan to attract attention. In reversing, the Second Circuit distinguished “use of a mark” in commerce, which is a statutory requirement, with use “as a mark,” which is not. “Use in commerce” merely means that the mark must be affixed on the goods or their packaging or displays, or in connection with the sale or advertisement of services.
But, the Second Circuit held, that while “use in commerce” must be shown, the plaintiff is not required to show that the defendant used the mark in any particular way – so long as the mark is affixed “in any manner,” the statute is satisfied.
The Second Circuit rejected a Sixth Circuit line of cases that does impose a “use as a mark” requirement, reasoning the if the defendant is not using the phrase as a mark, then it is not likely that there will be confusion. But the Second Circuit noted the likelihood of confusion is considered in the entire context of the parties’ activities, by employing the eight-factor test set forth in Polaroid Corp. v. Polarad Elecs., 287 F.2d 492 (2d Cir. 1961).
The Winfrey ruling makes it easier for owners of slogan marks to allege infringement. So long as the defendant is using the mark in any way in connection with the advertising or promotion of goods or services, it theoretically could infringe on the owner’s rights.
Of course, a plaintiff still must show likelihood of confusion using the Polaroid factors, and deal with any affirmative defenses. As explained below, the Winfrey ruling made the burden somewhat easier.
Fair Use Defense Rejected
The Second Circuit also reversed the district court’s holding that Winfrey’s use of the phrase was protected by the fair use defense. That defense in trademark law is based on the idea that all a trademark grants is the exclusive right to identify one’s goods or services as emanating from a particular source by using that word or symbol. Ownership and registration of a mark do not grant a monopoly on commercial use of that word or phrase. Competitors and others are free to use the same work, phrase or symbol in a descriptive manner – one that does not identify the source of the goods.
To make out a defense of fair use, a defendant bears the burden of proving that its own use of the word or phrase was (1) other than as a trademark; (2) in a descriptive sense; and (3) in good faith. In reviewing the complaint allegations in a light most favorable to the plaintiff, the Second Circuit conclude that defendants could not meet any of the three elements. (Of course, once the facts are developed in discovery, a court might well rule differently.)
Use of Other Marks
The Second Circuit’s discussion of the first fair use defense element – use other than as a trademark – sheds light on a major issue with respect to slogan marks: the impact of the use of other trademarks, including more famous “house marks,” in conjunction with a slogan. The complaint alleged repeated use of the slogan OWN YOUR POWER on the cover of the Oprah Winfrey magazine, as the title of a motivational event held by the Oprah Winfrey conglomerate, and promotion of that event both through social media and in the special “Own Your Power” section of Winfrey’s website.
This repeated use suggested that Winfrey was attempting to establish that phrase as an identifier of part of her media empire, a kind of sub-brand.
Kelly–Brown has plausibly alleged that Oprah was attempting to build a new segment of her media empire around the theme or catchphrase “Own Your Power,” beginning with the October Issue and expanding outward from there. We have recognized that established companies are allowed to seek trademarks in sub-brands. [citation omitted] Kelly–Brown's complaint implies that Oprah is a brand and is therefore the ultimate source of all things related to that brand, but that defendants sought to use the phrase “Own Your Power” to denote a particular line of services and content within the larger Oprah brand.
The mere fact that the much more famous Oprah name and related mark were used in conjunction with the slogan was not sufficient to evidence that Own Your Power was not being used as a mark.
True, in some prior cases, the Second Circuit had ruled that the use of a defendant’s own, more famous, mark in conjunction with the challenged word or slogan was sufficient to dispel any confusion or finding that the word or phrase was being used as a mark. But, the Second Circuit held, those cases did not announce a rule of law that use of a different mark per se renders use of the challenged word or phrase other than as a mark.
Conjunctive use of another mark is only “one of several considerations in a fact intensive analysis.” 717 F.3d at 311. Thus, for example, in a prior decision where the challenged phrase has been used in only a single advertising campaign and never affixed to the goods or packaging, the Second Circuit held that the phrase did not function to identify the goods or services. In Winfrey, in contrast, the mark had been used repeatedly in various promotions of what appeared to be a new venture (motivational events) by the Winfrey empire. That was enough to find a trademark use.
Thus the use of even a very famous name or mark – the Second Circuit acknowledge Oprah Winfrey’s fame, and that her name and image “figure prominently in the branding” of her media products – may not be sufficient by itself to defend a use from a charge of trademark infringement.
A recent Trademark Trial and Appeal Board decision similarly holds that that use of a house mark may not be enough to dispel confusion. In In re Sokol and Co., 2013 WL 3090459 (TTAB March 8, 2013), the TTAB affirmed rejection of an application to register the following mark for seasoned coating for meat, fish and poultry:
because the mark was likely to cause confusion with another mark, WING IT, registered for related goods.
In comparing the marks, it noted that the main phrase “Let’s Wing It” predominated over the oval portion bearing the house mark “Tasty Delight,” and thus the mark as a whole was very similar to the already-registered WING IT. Accordingly, “[c]ustomers are likely to perceive applicant’s mark as a parent brand accompanying a sub-brand. They are also likely to perceive marks that closely resemble the sub-brand as a presentation of the sub-brand that happens incidentally to be unaccompanied by the parent brand.” 2013 WL 3090459, * 6.
Such decisions match experience in the marketplace. There are many examples of marks being used to denote one line of goods within a producer’s entire line. TOYOTA COROLLA, MARS 3 MUSKETEERS and NIKE AIR JORDAN are but three famous examples. In each case, the mark for the sub-brand could stand alone – a consumer in each market would readily understand a reference to a “Corolla” automobile, a “3 Musketeers” candy bar or an “Air Jordan” sneaker. If a competitor appended its house mark to the sub-brand, confusion would likely result. If Ford began promoting a new FORD COROLLA line, there is little doubt that Toyota would have ample grounds to complain.
Other Legal Issues Concerning Slogan Marks
Other legal issues which commonly arise in conjunction with slogan trademarks include:
Ownership Established By Use, Not Conception
Advertising slogans are typically conceived by persons working at advertising agencies and then used by their clients to promote their products and/or services. Who owns the slogan? On this issue, trademark law differs from patent and copyright law. The latter are meant to grant limited monopolies to those who conceive of useful inventions or create artistic expressions. Thus, it is the inventor or author who is first vested in these intellectual property rights.
Trademark law, in contrast, protects the rights of a business to use a particular word, phrase or device as its source-identifying symbol in the marketplace. Trademark rights are gained when a business begins to use the mark to identify its goods and services, not when it is conceived.
An individual consultant learned that the hard way in American Express Co. v. Goetz, 515 F.3d 156 (2nd Cir. 2008). The consultant created the slogan “My Life. My Card” and mailed proposals containing that slogan to several credit card companies. American Express did not respond to the proposal, but later adopted the same slogan as a tagline in a worldwide promotion. The Second Circuit held that the mere conception of the slogan created no trademark rights. The proposal made clear that the slogan was intended to be associated by consumers with the credit card company, not with Goetz as a business consultant or advertising service. Without trademark use, Goetz owned nothing.
Descriptive And Highly Descriptive Slogans
Slogan trademarks often function to describe the goods or services, usually in laudatory terms. Descriptive slogans, like other descriptive trademarks, do not initially function as a trademark, but they can eventually achieve trademark rights if the owner develops “secondary meaning” – i.e., through extensive promotion and sales of goods or services in connection with the mark, it becomes closely associated with a single source.
This is what happened in Ringling Bros. Barnum & Bailey Combined Shows Inc. v. Celozzi-Ettelson Chevrolet Inc., 855 F.2d 480 (7th Cir. 1988), where the court found the slogan THE GREATEST SHOW ON EARTH, although originally primarily descriptive and weak, through continued use and promotion had become a celebrated and famous mark that the public associated with the circus, specifically the Ringling Brothers circus.
In some cases, however, even extensive promotion will not be sufficient to establish a slogan as distinctive enough to function as a mark. Both the TTAB and Federal Circuit have held that some phrases – especially self-laudatory ones – are so common and descriptive that they cannot function as a mark, and cannot be registered. For example, the phrase THE BEST BEER IN AMERICA was held not registrable, In re Boston Beer Co., 47 U.S.P.Q.2d 1914 (TTAB 1998), aff’d, 198 F.3d 1370 (Fed. Cir. 1999), and the Federal Circuit opined that the phrase was “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.”
The doctrine of reverse confusion is often overlooked. Discussed only briefly in Winfrey, it appears that it will play a prominent role in the case if it is not settled. In reading Winfrey, one gets the impression that the Winfrey organization and its counsel were convinced that the prominent use of Oprah Winfrey’s world famous name and related trademark would dispel any confusion caused by use of the slogan. Who would believe that her promotion had anything to do with plaintiff Simone Kelly-Brown – someone hardly heard of?
Such an approach ignores reverse confusion, long held actionable under the Trademark Act. As the Second Circuit explained, reverse confusion exists “where the consumer will believe that the junior user is the source of the senior user’s goods. In reverse confusion cases, consumers may believe that the senior user is an unauthorized infringer, and the [junior user’s] use of the mark may in that way injure [the senior user’s] reputation and impair its good will.” 717 F.3d at 204-05.
That theory works well for a small business plaintiff like Kelly-Brown. Given Oprah Winfrey’s gigantic commercial reputation, her repeated use of Kelly-Brown’s slogan would make it appear that the slogan was Winfrey’s own mark. Kelly-Brown’s use of her own mark would then look like a cheap act of trademark piracy.
Just as a judo master uses his opponent’s weight against him, in a reverse confusion case, Kelly-Brown can use the very fame and renown of Oprah Winfrey’s name and mark against her, as they make a finding of reverse confusion more, not less, likely. Thus, parties considering adoption of slogans similar to those registered, even by very small entities, should take heed that their own great fame may not be as advantageous as they think.
Advertising slogans remain a powerful and valuable marketing tool. Counsel asked to clear use of such slogans, to protect them as trademarks and to enforce those rights against others, need to carefully consider the unique legal issues which arise in connection with slogan trademarks. As the Winfrey decision shows, even large and heavily-lawyered organizations can stumble over the legal issues surrounding slogan marks.
A previous version of this post appeared in the New York Law Journal, October 31, 2013