Below is an excerpt from John McKeown's January 2015 Mailer where he discusses protecting brand advertising.
Slogans and Taglines
While advertising as a whole will not be protected under the Trademarks Act, slogans, sometimes referred to as taglines, may be. A slogan is a group of words or a phrase used to encourage consumers to purchase goods or services. A tagline may be included with a presentation of the brand name to help with the positioning of the brand by asserting particular strengths.
A slogan may be used for the purpose of distinguishing the wares or services of the brand owner from those of others and function as a trademark. In other cases the slogan will simply be part of the advertising used by the brand owner. Examples of well-known slogans are Nike's JUST DO IT® and General Electric's GE BRINGS GOOD THINGS TO LIFE®.
If a slogan functions as a trademark consideration should be given to obtaining a trademark registration. In this regard the slogan must be registrable, distinguish the brand owner's wares or services from the wares and services of others and be "used" within the meaning of the Trademarks Act. The filing of a trademark application and obtaining a registration will serve to protect the slogan. However, to the extent that a slogan is made up of common words or is descriptive, the scope of its protection may be somewhat limited.
USPTO Post Registration and Proof of Use Pilot
The United States Patent and Trademarks Office ("USPTO") randomly selected five hundred owners of trademark registrations and required them to submit proof of use of their trademarks. It seems that over half of the owners of the registrations selected for the pilot did not meet the requirement to show use. As a result of these findings a roundtable discussion of stakeholders was organized by the USPTO to discuss suggestions for ensuring the accuracy and the integrity of the Trademark Register.
As previously indicated I was asked to attend on behalf of the American Bar Association because Canada has a procedure for the summary removal of deadwood from the Canadian Trademark Register that is not currently available in the U.S. In the U.S. to accomplish the same result an action must be brought for cancellation which is much more complex and expensive.
I did attend and presented a brief dealing with the Canadian procedure and how it works. Click here for a copy of the brief.
It will be interesting to see what steps will be taken in the U.S. to ensure the accuracy and integrity of their Trademark Register.
Click here to read the entire mailer.
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