Happy New Year!

Bloomfield Hills, Michigan - January 2020-  Happy New Year to our clients and colleagues. We hope you have an enjoyable and prosperous 2020. If you have not worked with us before, in 2020 let us help you develop and grow your intellectual property and show you how to use it to improve your bottom line.
This month, we take a bit of a detour and discuss a trademark/copyright issue that comes up from time to time.

How Do I Protect A Slogan?

"Just Do It",  "I'm Lovin' It," "It's Finger Lickin' Good". Catchy slogans are everywhere and are associated with some of the country's most popular products. So, how do you protect them?

The first thing to realize is that you cannot get intellectual property ownership over a slogan outright. You can obtain trademark rights in a slogan, but ownership of a slogan as a trademark does not constitute outright ownership of the slogan. Rather, it constitutes a right to prevent others from using the slogan in a manner that is likely to cause confusion as to the source, affiliation, or sponsorship of goods and services. In other words, slogans function as trademarks when they act as "source identifiers."  
Unlike essays or novels, mere words, phrases, and slogans cannot be protected by copyright because they lack the minimum amount of creativity required for copyright protection. 37 C.F.R. ยง 202.1. However, trademark law is not concerned with the amount of creativity involved in a mark, but rather, it's use as an identifier of the source of goods and services. Thus, phrases like "Just Do It", "I'm Lovin' It," and "It's Finger Lickin' Good," have been successfully registered as trademarks.
The key to registering slogans as trademarks, however, is that you must actually use them as trademarks. When they are applied to a product itself, as opposed to the product's tags or packaging, slogans often serve another function: ornamentation. If a slogan is deemed to be merely a decorative feature, the Trademark Office will not register it. If the slogan is only incidentally decorative and is considered to function as a source indicator, it may be registered. If the Trademark Office considers a slogan to be decorative, an applicant can submit evidence to show that it functions as a source identifier, i.e., as a trademark. Such evidence may include prior registrations for the mark, surveys, evidence of continued use of the mark for five (5) consecutive years, advertising and sales expenditures, etc. If the product does have the slogan on it, one strategy is to also include the mark on tags or packaging and to submit those as your specimen of use since they should not prompt an ornamentation rejection.  

Design Patents Versus Utility Patents 

Clients often ask about the differences between design and utility patents. The phrase "design patent" confuses some people because in every day usage, the term "design" frequently connotes the structure, function, and properties of a product. 

Not so with design patents. Design patents protect the "ornamental appearance" of an article of manufacture. Utility patents protect the structure and/or operation of processes, machines, articles of manufacture, and compositions of matter. Design patents are relatively simple in nature and include a set of drawings, a description of the drawings, and one claim that essentially says that what is claimed is what is shown in the drawings. Utility patents and design patents have different terms. Utility patents expire 20 years from their earliest effective US filing date. Design patents expire 14 years after they issue.
Design patents can be powerful. Many products include aesthetic features that are valuable. We have done quite a bit of work with the footwear industry, which relies heavily on aesthetic features to create value. Like utility patents, the claimed features of a design patent must be novel and non-obvious. While many people perceive design protection as "narrow," it is also possible to "broaden" a design claim relative to the commercial product by putting unclaimed features in dashed lines. 
One limitation on design patents is that the claimed features must not be functional. If the claimed ornamental features are driven primarily by functional considerations, the claim may be invalidated. Without this limitation, design patent applicants could circumvent the requirements for utility patent protection by disguising functional features as ornamental ones and avoiding the type of examination that is performed on utility patent applications.
In addition to design patents, the ornamental features of an article of manufacture may be protected by copyright and as product trade dress. However, in those cases as well, functional features may not be protected. Otherwise, a de facto patent could be obtained without the rigors of the patent examination process.
Some products may be protected with both design and utility patents. The smartphone giants Apple and Samsung have protected their products with both kinds of patents. However, if both types of patents are sought, it is important to segregate the ornamental features from the functional ones and makes sure that the utility patent application is written in a way that respects that distinction.
Unlike utility patents, the examination process for design patents is often much easier and quicker. First action allowances are quite common. While design patents must be novel and non-obvious, the visual nature of the analysis and the generally narrower scope of design patents means that they are often allowed without an office action. However, in drafting a design patent application, it is critical to have good drawings that are consistent from all views. Otherwise, the claim may be rejected for lack of enablement, and it may not be possible to overcome the rejection. If you attempt to correct design patent drawings, the corrections may be deemed "new matter" which is not allowed. Thus, you may have to file a new application.      

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About Hansen IP Law PLLC
Ha nsen IP Law is an intellectual property law firm that provides "Big Law" caliber services using a small firm platform.  Although based in suburban Detroit, we represent clients throughout the United States and abroad. We do not operate on a leveraged model.  Each of our clients is represented by an experienced intellectual property attorney with over a decade of "Big Law" experience, including as a partner in Los Angeles and Detroit firms. Unlike many firms of our size, we have substantial patent litigation experience in courts throughout the United States, which allows us to strategically strengthen your intellectual property portfolio.  For more information, please contact Steve Hansen at 248 504 4849 or srh@hanseniplaw.com. You can also visit us on the web at www.hanseniplaw .com.