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.

Im 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 mustnt 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.


 
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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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