trademark reverse confusion

Winfrey Decision Addresses Advertising Slogans as Trademarks

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’.