Your company has been in business and using the same tagline for a number of years. Another company begins using the same tagline. What are your options?
While some might mistakenly refer to the issue as a copyright issue, it is actually a trademark or unfair competition issue. Briefly, copyright law protects original creative material such as books, films, visual art, and even magazine columns. Trademark law protects one’s exclusive use of an identifier (e.g., branding) for the source of a specific product or service. The trademark-protected identifier can be a word, phrase, design, shape, color, - and, yes, a tagline.
When evaluating whether the other company’s use of an identical tagline violates your trademark rights and whether legal action is warranted, you should ask yourself the following questions:
1) Are you actually using the tagline in a manner that qualifies for trademark protection? This requires using the tagline in commerce. Many business owners don’t fully understand that trademark use in commerce requires using the trademark in connection with offering for sale the business’ good or service. It is not sufficient to use the company name, logo, or tagline on company letterhead or business cards. Instead, the company name, logo, or tagline must appear on the product or the product’s packaging. If the trademark is used with a service, the trademark must appear with advertising for the service.
2) If you have trademark rights, have they actually been infringed? Just because a company has trademark rights, those rights do not absolutely prohibit anyone else from using the same name, logo, or tagline. A business owner can prevent others from using her trademark only if the other use is confusing. The same exact trademark you use can be used on a substantially different product or in a substantially different industry. That’s why Delta Airlines can co-exist with Delta Faucets and Outback Cars can co-exist with Outback Steakhouse.
3) Have you registered your trademark? Registration is not a prerequisite for valid trademark rights. You instantly develop trademark rights by being the first to use the trademark in commerce in a particular geographic region. Nevertheless, federal registration of the trademark with the United States Trademark Office does provide a trademark owner with a number of additional benefits including nationwide exclusivity in the trademark, increased powers to enforce trademark rights, and eligibility to receive higher damage awards from the infringer if your trademark infringement lawsuit is successful.
My book, The Cyber Citizen’s Guide Through the Legal Jungle, includes guidelines for determining if you have trademark rights and whether they have been violated. It also includes fully annotated examples of completed trademark registration applications.
