Members of the MARQUES Famous and Well Known Marks Team hosted a webinar on advertising slogans on 28 February.

Introducing the discussion, Juan Carlos Durand Grahammer of Durand Abogados, Peru noted that, while in principle registrable as trade marks, slogans can face problems based on descriptiveness or lack of distinctiveness.

This has led to questions such as whether there should be special forms of protection, different terms of protection or alternative means of resolving disputes.

Giving a US perspective, Robert Horowitz of Baker & Hostetler LLP said that some slogans, including The Ultimate Driving Machine, We try harder, Just do it and Because you’re worth it, have been registered at the USPTO while others (including Intelligence of Things, Everybody vs Racism, Texas Love and Team Jesus) have been refused.

He highlighted the importance of dictionaries, including slang dictionaries, as well as internet searches, in assessing whether a slogan can be registered.

Providing an advertiser’s perspective, Rachel Krouse of WPP stressed the important role that slogans play in communication with consumers, and the need for exclusivity – and she distinguished between long-lasting brand taglines and short-term campaign slogans.

Rachel also discussed the impact of AI, the role of trade mark clearance, consumer focus groups and the role of corporate culture (and specifically the appetite for risk). She also said that the global stage and political/ethical sensitivities have to be considered, and emphasised the need for due diligence.

Finally, Monica Davò of Italy’s Institute for Advertising Self-Regulation and Elisabetta Mina of CARNELUTTI Law Firm discussed Italy’s self-regulation regime, which provides for a binding decision from a jury comprising academics, lawyers and marketing experts.

There were several questions from the audience, in particular about the Italian procedure and outcomes of cases.

If you registered for the webinar, you can access the resource pack on the MARQUES website here.