Insurance · 24 August 2018

How to register a slogan as a trademark and make money from it

The best way to protect a slogan is to register it as a trademark

If you’ve got an original idea that you could potentially profit from, how do you ensure you retain control of it? Grid Law founder David Walker helps one reader register a slogan as a trademark.

Question

I have an idea for a slogan that could be applied to t-shirts and other products such as hats, cups, nightwear, journals etc. It’s something that I believe would be very popular, as I’ve not seen it done yet.

I’m not sure how to go about the whole process so it would be great if you could provide some advice.

Thank you in advance for any information you are able to offer

Answer

Thank you for your question.

The first step is to protect your idea and the best way to protect a slogan is to register it as a trademark.

Not all slogans are registerable as trademarks so it will need to fulfil the following three criteria:

  1. It must be capable of being represented graphically;
  2. It must be distinctive, not descriptive of what the product is or does; and
  3. It mustn’t be excluded from protection.

It’s the third criteria that you will have to look at carefully, especially if you are combining the slogan with a logo or other design. For example, special emblems such as national flags are excluded from registration.

You will also be prevented from registering your trademark if it indicates the geographic origin of the product or if someone else has a prior right to it.

To find out if anyone has a prior right to your slogan (or something very similar to it) you should carry out a thorough trademark search. Start with the Intellectual Property Office which has a database of all registered trademarks which you can search for free.

If that search is clear, simply Google the slogan and see if it is found. If anyone else is using it as an unregistered trademark they may be able to block your application to register it.

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Nike

How a UK micro business sued Nike for trademark infringement and won

After a small company spotted Nike had launched a new slogan close to its own, the business successfully sued the sportswear giant for trademark infringement.

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If you find an identical or similar trademark to the slogan you wish to protect, look at the products and/or services it’s being used for. It’s entirely possible for two identical trademarks to co-exist (as I explained in this article: How two identical brands can co-exist)

If you cannot trademark your slogan now, either because it’s not registerable or because someone has a prior right to it, think about whether you could make any changes to it and then search again.

If the slogan simply isn’t registerable and you can’t make changes to it, you can still use it. You just have to accept that protecting it is much harder. You would have to develop a strong reputation as the owner of the slogan and then you would have some protection through the laws of passing off.

If your slogan is registrable as a trademark you will need to decide what classes to register it in. Trademarks can be registered in one or more classes of products and services (there are 45 all together) and you will need to choose the classes relevant to the products you are applying the trademark to. So, in your case you could register the slogan in class 16 for journals, class 21 for cups and class 25 for t-shirts.

The registration fee will increase with the number of classes you apply for so keep in mind how many products you are likely to sell. However, if you know you want protection in a range of classes it’s more cost effective to include them all in one application than to register the slogan as series of trademarks over a period of time.

Another point to keep in mind is that trademarks are territorial. If you are only planning to sell in the UK you only need to register a UK trademark. However, if you wish to sell internationally you may have to consider an EU trademark or to register it in other countries around the world. This is where costs can really escalate so again, be realistic about how many products you are likely to sell and this is something you can do in stages as sales increase.

When you have protected your slogan, the next step is to start earning money from it. There are several options for you. For example, you could sell your trademark for a lump sum payment, licence it and receive a royalty on each item sold or you could set up your own business and sell the branded products yourself.

For more information on this please have a read of my previous articles:

If you would like any further help or advice in relation to registering a trademark or how to make money from it, please feel free to email me again.

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ABOUT THE EXPERT

David Walker is the founder of Grid Law, a firm which first targeted the motorsport industry – advising on sponsorship deals, new contracts and building of personal brands. He has now expanded his remit to include entrepreneurs, aiding with contract law, dispute resolution and protecting and defending intellectual property rights.

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