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
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
A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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