How “Literal Meaning” Can Impact Your Trademark Application

by | Jul 20, 2019 | Trademark

If you’re trying to set your business apart from its competitors and prevent other companies from using phrases or symbols that define your company, a federal trademark could be a viable solution. The United States Patent and Trademark Office maintains a database of existing trademarks to ensure that parties don’t apply for already-trademarked slogans. Before applying for a trademark, however, you must understand the concept of “literal meaning” can impact your trademark application.

Requirements for a Trademarked Slogan

For a slogan to qualify for a trademark, it must meet one of two definitions:

  • It must be distinctive and unique to the company applying or the trademark
  • The phrase or symbol has another meaning that causes consumers to immediately think of a brand, product, or service; the interpretation must go beyond the literal meaning of the phrase or symbol
Defining “Literal Meaning” 

Trademark law is arcane.  Unless you made up the name of your brand (e.g. Exxon for gas), every word or phrase has a literal meaning. Consider, for example, Nike and its slogan “Just Do It.” The literal meaning is a direct command to accomplish the task at hand. However, through Nike’s advertising and marketing efforts, the phrase “Just Do It” has taken on a secondary meaning that is strongly tied to the brand itself. Another example is the McDonald’s slogan “I’m Lovin’ It.” The literal meaning is clear, as people can say “I’m loving it” about any number of things. However, the secondary meaning is distinct to the McDonald’s brand.

When Literal Meaning Keeps You from Trademarking a Slogan

If you plan on trademarking a slogan, you must prove that the slogan has a secondary meaning that transcends its literal definition and usage. As an example, consider a grocery store trying to trademark the phrase “convenient food shopping.” The phrase has a clear literal meaning, but no secondary meaning. It’s simply a description of the company’s offerings and services. It would be extremely difficult for a company to get a trademark. As another example, consider the Excedrin trademark of “Extra Strength Pain Reliever.” That has a fairly obvious literal meaning. By using the phrase in marketing campaigns for years, Excedrin was able to develop a secondary meaning that allowed them to pursue a trademark for the phrase. 

To develop a secondary meaning for a phrase and have it qualify for a trademark, you may need to use it for five or more years continuously in your advertising campaigns or invest a significant amount of money in its marketing use.  

If you’re ready to look into registering a trademark and other methods for protecting your company’s intellectual property, EmergeCounsel is here to help. Call us at 888-EMERGE-0 to schedule a consultation and discuss your goals for your business.


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