Can you trade mark a Slogan?

Friend, imagine for a second that you run a doughnut delivery business called “Delectable Doughnuts”. 

You come up with a snazzy slogan “Doughnut Kill My Vibe” which you think your customers will love a whole lot (pun intended) but you don’t want every Tom, Jerry and Ben feasting on your phrase.  

What is a slogan?  

A slogan is a memorable phrase that your business can use to market its products or services. It’s a powerful way to make your business top-of-mind in the minds of customers buying goods or services that your brand offers.  

Some popular slogans include: 

Now, what makes the above slogans ‘registrable’ are that they are unique and not used to describe the products or goods they are advertising.  
 
Like any other trade mark type, the slogan trade mark must be registered in the appropriate ‘classes’ for the goods and services associated with the slogan.  
 
For example, ‘I’m Lovin It’ is registered in 3 classes that relate to food, drinks and restaurant services. ‘Lifes Good’ is registered in over 30 of the 45 classes and ‘Just Do it’, is registered in 8 classes covering goods and services sold using the slogan.  

It is imperative that you choose the right class(es) of goods and services that your trade mark fits into. Failure to do so may result in your trade mark not sufficiently protecting your brand or you not being able to challenge or sue copycats if they use your trade mark without your permission.  

Can any slogan be registered as a trade mark? 

Not quite. You cannot register trade mark over a slogan which: 
 

• is generic or a commonly used phrase (in the relevant classes it is being registered); 
• simply identifies where your business is situated;  
• is not unique or already being used by someone else.  
• specifies the goods and services that your business offers. 
• refers to the quality of what you sell; or 

• is offensive. 

Why should I register a trade mark over my slogan?  

After you register a trade mark over your slogan: 

• you can exclusively use it to market the goods and services that your business offers. So, if another business uses your slogan without your permission, you can enforce your legal rights against them including forcing them to stop using the slogan and accounting to you for any profits made from its use (and in some cases, damages too).   
   
• it will become an asset of your business. That means that if you ever wish to sell your business, your registered trade mark could drive up your business’ worth. 
   
• you can license it to other small businesses who wish to sell your product. The result? More passive income through the doors of your business! 

What happens if I use someone else’s trade marked slogan? 

If they have a registered trade mark AND you are using it in the same classes of goods and services or related classes of goods and services, the owner of the trade mark can enforce their legal rights against you.  
 
Before publicly adopting a slogan to sell your goods and services, we recommend you complete a search of the Australian Trade Mark Online Search System to see if the phrase you intend to use has been registered as a trade mark. Better yet, check in with a trade mark lawyer to double check and ensure that you are protected against a claim of infringement.   

Crystal clear? Great, now get back to business. If you’re still a bit foggy on trade marking a slogan, we can help clear things up for you here. 

***Disclaimer. Please read!!***   

This article is for general information purposes only and should be used solely as general guidance. It does not and is not intended to represent legal advice or other professional advice.