Trademark Registration for Business Slogans, Plus Things to Know Before Enforcing Business Method Patents

In this week's post, we explore trademark registration for business slogans and the challenges that companies may face in securing federal protection. Registering a slogan as a trademark requires careful consideration of factors like distinctiveness and the slogan's function as a brand identifier. We discuss the importance of avoiding generic, merely descriptive, or informational phrases that may be refused registration by the USPTO, and the value of involving IP counsel early in the creative process to ensure a slogan is both marketable and legally protectable.

Additionally, we highlight the nuances of enforcing business method patents, particularly in light of the significant legal changes following the Supreme Court's Alice Corp. v. CLS Bank International decision. This ruling has made it more challenging to defend the validity of patents that are too broadly drafted or abstract in nature. This post also addresses the need for a rigorous two-step analysis to determine patent eligibility, advising patent holders to critically assess their patents—especially those issued before 2014—before pursuing enforcement.

Securing Trademark Registration for Your Business Slogan

One of the most common areas of inquiry in the intellectual property field of law is how to obtain federal registration for a business slogan. While it is possible to register a business slogan as a trademark, there are certain parameters that apply. The best practice is to be aware of these parameters—and to incorporate them into the creation and design of a business slogan from day one—in order to avoid adopting options that cannot be registered and, in choosing a registrable slogan, facilitate the most efficient registration process possible.

A slogan is a type of phrase defined as “a brief attention-getting phrase used in advertising or promotion” and “a catchphrase used to advertise a product.” See TMEP § 1213.05(B)(i), citing Merriam-Webster.com and Webster’s New World College Dictionary (4th ed. 2010). See also J. Thomas McCarthy, 1 McCarthy on Trademarks and Unfair Competition § 7:19 (5th ed. 2019). Slogans are often paired with an existing company mark or product mark (think, “Have a COKE and a smile”). If your business regularly uses a slogan in its ad campaign, obtaining federal registration can keep others from using your creative catchphrase and can also help your business—or house mark—stand out.

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Are Your Business Method Patents Worth the Paper They’re Printed On?

Before you decide to enforce your patent rights, you need to understand why relying on the presumption of validity is no longer enough to avoid having your case dismissed and potentially even being sanctioned for filing a frivolous lawsuit.

So, what are we talking about when we say a patent is presumed to be valid? Once a patent is issued by the United States Patent and Trademark Office, it carries with it a legal presumption that the patent—by virtue of being issued by the government—is a legally valid patent. This is codified in 35 U.S.C. § 282—the first sentence of which states: “A patent shall be presumed valid.” What this means is that the burden of proof is placed on the party challenging the validity of the patent to prove that the patent is not valid by “clear and convincing evidence.” This is the highest standard of proof recognized in civil law, although it is lower than the “beyond a reasonable doubt” standard in criminal law. The justification for this presumption is that patent applications go through a lengthy examination by subject matter experts at the USPTO who are the first arbiters of eligibility and overall validity. Patent claims are often outright rejected or required to be significantly narrowed before the government will permit the patent to issue—a process that can often take three or more years from the date the application is filed.

Read about Things to Know Before Enforcing Business Method Patents

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Darin M. Klemchuk, founder of Klemchuk PLLC, is dedicated to promoting productivity and performance for attorneys and leading conversations on law firm leadership and management. Discover more about his work and insights by visiting Thriving Attorney.