Slogans

Slogans US and EU legal protection for slogans that identify and promote the brand Ross D. Petty Babson College

Susanna H.S. Leong National University of Singapore

May O. Lwin Nanyang Technological University

Marketers believe that a brand's essence can often be distilled down to a simple phrase or sentence that captures both the soul of the brand and its unique selling proposition. Some even suggest that this proposition could serve as a brand slogan. Given the importance of brand slogans, it is surprising that the marketing literature does not discuss how to protect these statements from imitation by other brands. This paper fills this need by positing that, with proper drafting and use, most slogans can be protected against imitation as brand identifiers under trademark law. With more brands going international, slogans also provide an important ingredient for international branding. This paper develops recommendations for finding the proper balance between promotion and distinctiveness that would allow slogans to enjoy protection from imitation under both US and EU trademark law.

Introduction Marketing experts extol the marketing benefits of advertising slogans. David Aaker (1996, p. 58) states: 'A slogan can capture the essence of a brand and become an important part of the brand equity. If a brand is "packaged meaning", a slogan can be the ribbon that ties the package together and provides an extra touch.' Many advertisers believe that slogans work best when they reflect both the soul of the brand and the company's reason for being in business (Kiley 2004). Therefore most brands try to associate themselves with a specific benefit, which over time acts International Journal of Advertising, 29(3), pp, 473-500 © 2010 Advertising Association Published by Ware, www.ware.eom DOI: 1O.25O1/SO265O4871O2O127O

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like a stake in the ground, claiming territorial rights over its value proposition, such as 'Volvo is Safety' and 'Tide Washes Whiter' (Ries & Ries 1998, p. 44; Dawar 2004). Aireck and Settle (1999) also note that slogans can communicate an emotional mood (e.g. 'The night is made for Michelob' or 'The greatest show on earth'). Researchers have found that recognition of slogans can vary widely. Eor example, a survey found that Wendy's 'It's better here' had zero recognition, while Allstate's 'You're in good hands' was recognised by 87% of consumers surveyed (Kiley 2004). Of the various components that make up marketing communications, slogans appear to play a crucial role in contributing to brand building, and are important in generating and sustaining the financial performance of a brand (Mathur & Mathur 1995; Haigh & Knowles 2004). In addition to these branding benefits, courts have recognised that appropriate slogans may assist a brand in protecting its unique identity by preventing imitation by rivals. Eor example, in the 1960s, Maidenform offered an entire line of 'dream' bras -DAYDREAMS, DREAMLINES and DREAM-AI RE. Its slogan at the time was 'I dreamed that I went ... in my MAIDENEORM bra.' When Bestform launched its TEENDREAM bra, Maidenform sued and won. The Trademark Trial and Appeal Board held that, based on the slogan and family of brand names, consumers were likely to be confused concerning the source of T E E N DREAM bras iMaidenform, Inc. v. Bestform Foundations, Inc. 1969). More recently, Alberto-Culver had a family of TRESEMME names, including TRESPAC, TRESSPRAY, TRESGELEE, TRESWAVE and TRESHOLD, and also used one-word slogans in advertising, such as TRESchic and TRESprofessional. It successfully prevented registration ofthe name 'Trevive' for haircare products, arguing that the prefix TRES is pronounced 'tray' just as it would be in 'Trevive' because the latter also appears to have a Erench connotation iHan Beauty, Inc. v. Alberto-Culver Co. 2001). Unfortunately, judicial decisions also suggest that brand marketers often develop and use slogans with little thought regarding their protection from imitation. It is only when they are imitated that lawyers are called in to develop ex post legal protection. This paper asserts that legal protection should be considered along with the marketing value while the slogan is being developed. Slogans can play the crucial role of succinctly communicating the essence of a brand to consumers, but they can easily

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SLOGANS: US AND EU LEGAL PROTECTION

be imitated. Copyright law typically does not protect short phrases at all. Stronger protection against imitation may be gained by trademark protection, but only in cases where the slogan qualifles as a trademark. Thus, brand marketers who are concerned that their rivals may imitate their slogans must be aware of the legal requirements for trademarks when developing and trying to protect slogans. We examine trademark requirements for slogans in both the United States (US) and European Union (EU), two of the largest consumer product markets in the world. We also develop a framework that balances marketing considerations with legal requirements to assist marketers in their decision processes when seeking legal exclusivity for their slogans. The paper concludes with guidelines that would help marketers develop slogans that can be protected as trademarks.

Defining and protecting slogans Keller (2003, p. 204) deflnes slogans as 'short phrases that communicate descriptive or persuasive information about the brand'. He notes that they often appear in advertising, but also can appear on packaging and other marketing materials. Wheeler (2003, p. 50) says that a slogan 'captures a company's brand essence, personality and positioning, and distinguishes the company from its competitors'. She states that the word 'slogan' is derived from the Gaelic slaughgaiirm meaning 'war cry'. Wells et al. (2006) note that slogans can consist of an unusual or unexpected phrase, rhyme, rhythm or alliteration, or parallel construction (e.g. the US Army's 'Be all that you can be'). In this paper, we wish to distinguish slogans from advertising taglines that arguably flt under the Keller deflnition and that Wheeler uses synonymously with slogans. Taglines are short, catchy and often memorable phrases used at the end of an ad to complete or wrap up the creative idea (Wells et al. 2006). For example, a print ad from the Nike women's campaign used the headline 'You are a nurturer and a provider. You are beautiful and exotic', set in an elegant script. The tagline on the next page used a rough, hand-drawn, grafflti-like image that said, 'You are not falling for any of this.' However, few consumers would identify 'You are not falling for any of this' as a Nike slogan. In contrast, most consumers would recognise 'Just do it' as a slogan synonymous with the Nike brand. Unlike taglines, which are used in one ad campaign and promote but do not

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identify the brand, slogans are not just used in one advertising campaign but are repeated from ad to ad and, like brand names and logos, slogans identify the brand on its own in the minds of consumers (Wells etal. 2006). Thus a tagline might be just a cute ending to an ad, or it might develop ! into a possible future slogan if it is used extensively and becomes well known to consumers. However, many taglines never become uniquely associated with a particular brand and therefore never become slogans as we define the term here. Slogans also should be distinguished from jingles that are advertising set to music. A catchy melody combined with memorable lyrics may become well known to consumers and identify a particular brand, such as the two jingles made famous to American consumers by Oscar Mayer ('My bologna has a first name ...' and 'I wish I were an Oscar Mayer wiener ...'). However, even such well-known jingles are typically considered too long to be protected under trademark law (e.g. Dr Pepper Co. v. Sambo's Restaurants, Inc. 1981). Rather like other forms of advertising, jingles are protected from imitation by copyright law (Ramsey 2006). Both the US and the EU have allowed registration of short sound trademarks such as the NBC chimes (US Reg. No. 0916522). Furthermore, a recent decision by the Second Circuit Court of Appeals conceded that a musical composition could function as a trademark for a brand, although not for the composition \tse\ï {Oliveira a/kla Gilberto v. Frito-Lay, Inc. 2001). So both jurisdictions may allow the registration of short jingles as trademarks at some point in the future. The US has registered a number of trademarks based on the words of shorter jingles, as illustrated in Table 1. Eor example, although the Dr Pepper jingle was denied trademark protection, the company did Table 1: US slogan trademarks derived from jingles Word mark

Owner

Year

Reg. # 0961016

Have it your way

Burger King

1973

Plop, plop, fizz, fizz, oh what a relief it is

Alka-Seltzer

1977

1079406

Be a pepper

Dr Pepper

1980

1136373

Have a good night's sleep on us

Mattress Discounters

1989

1567395

Like a good neighbor. State Farm is there

State Farm

1991

1668793

The best part of waking up is Folger's in your cup

Folger's Coffee

1992

1676268

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register the slogan BE A PEPPER, taken from the jingle (US Reg. No. 113673). These registrations appear not to include the music, so technically they are slogan word trademarks rather than jingle trademarks. However, it seems likely that these trademarks could protect against confusingly similar words in slogans or in jingles, even if they do not protect against the use of a similar melody with distinctive words. While jingles generally are too long for trademark protection and must rely only on copyright protection, slogans are generally considered too short to be protected under copyright law iSinanide v. La Maison Cosmeo 1928; Kitchens of Sara Lee, Inc. v. Nifty Foods, 1959). Copyright law requires a minimum level of originality iFeist Publications, Inc. v. Rural Telephone Service Co. 1991). A short slogan consisting of ordinary words, such as 'The most personal sort of deodorant' is not protected under copyright law iAlberto-Culver Co. v. Andrea Dumon, Inc. 1972). The US copyright regulations explicitly indicate that short phrases such as slogans may not be registered for copyright protection (37 C.ER. §202.1). (Copyright law provides only limited protection from imitation for jingles and other forms of advertising. It protects only expression (once fixed in a tangible medium), not the ideas within the expression. Eacts and ideas in advertising may be imitated by rivals (Ramsey 2006). Copyright law does not protect commonly used components or words iAmerican Direct Marketing, Inc v. Azad Int'l, Inc. 1992). In addition, copyright law allows for fair use (fair dealing in the EU) copying of modest amounts of copyrighted expression (17 USC. §107), as well as many advertising parodies. Thus short promotional phrases used in the advertising context that are not trademarks may be copied or imitated by others. In contrast to copyright protection of expression, trademark law protects source identifiers and covers similar words, similar sounds and similar meanings. Eor example, the slogan GATORADE IS THIRST AID was found to infringe the trademark brand name THIRSTAID, because the slogan was found to function as a trademark and it contained the trademarked brand name iSands, Taylor & Wood Co. v. The Quaker Oats Co. 1992).

Trademarks also may be considered confusingly similar to each other if they sound similar when spoken out loud, such as WHERE THERE'S BUD, THERE'S LIFE and WHERE THERE'S BUGS, THERE'S LIEE iChemical Corp of America v. Anheuser-Busch, Inc. 1962). They may be confusingly similar if the words look similar, such as KING OE BEERS

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and BEER OF BEERS {Anheuser-Busch, Inc. v. Customer Co., Inc. 1996). Finally, marks may be similar if they have similar meanings even if otherwise dissimilar, such as I GIVE MY MAN ENGLISH LEATHER EVERY CHANCE I GET and YARDLEY LEATHER: GIVE IT T O YOUR MAN TONIGHT {Mem Co. v. Yardley of London, Inc. 1981). Although trademark law provides greater protection from imitation than copyright law, it is important to note that trademark law does not provide complete protection. The slogan YOU GOTFA EAT was found not to infringe on the website name YouGottaEat.com because the latter was descriptive and had not come to identify a particular brand in the minds of consumers {YouGottaEat, Inc. v. Checkers Drive-In Restaurants, Inc. 2003). Similarly, the company name Just Did It was found not to infringe Nike's slogan, JUST DO IT, because the company name functioned as the mailorder source of the product rather than as a brand identifier {Nike, Inc. v. Just Did It Enterprises 1993 ). Finally, as the preceding case suggests, trademarks may be the subject of a descriptive fair use or fair use parody defence. For example, a court refused to find either infringement or dilution of Carnival's FUN SHIP trademark from SeaElscape Casino Cruise's use of the slogan SEAESCAPE T O A SHIP FULL OF FUN. The court based its conclusion in part on the common use of the word 'fun' in the travel and entertainment industries rather than a formal fair use analysis {Carnival Corp. V. SeaEscape Casino Cruises, Inc. 1999). Similarly, a court allowed CREST brand toothpaste to advertise that it was 'The dentist's choice for fighting cavities,' despite protests from DENTIST'S CHOICE-brand toothbrushes {Wonderlabs, Inc. vs. P&G Co. 1990). rhe US courts also allow some leeway to parody famous slogans, such as when the slogan T H E JOY OF SIX was used in a newspaper article and related sports memorabilia to celebrate the six championship victories of the Chicago Bulls basketball team {Diana Packman v. Chicago Tribune Co. 2001). Similarly, a fiorists association was allowed to advertise 'This bud's for you and 11 more rosebuds' {Anheuser-Busch, Inc v. Florists Association of Greater Cleveland, Inc. 1984) and a marketer of T-shirts could advertise Myrtle Beach using the slogan ''Fhis beach is for you' {Anheuser-Busch, Inc V. L & L Wings, Inc. 1992). Finally, a printing company producing pocket calendars and address books was allowed to use the descriptive slogan 'Don't leave home without me pocket address book' despite the similarity

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to American Express's well-known slogan iAmerican Express Co. v. CFK, Irte. 1996). Even before the federal prohibition of dilution by tarnishment, courts were protective of slogan imitations that might harm the value ofthe original slogan, such as a condom maker's slogan 'Never leave home without it', imitating the American Express slogan iAmerican Fxpress Co. v. Vibra Approved Laboratories Corp. 1989). The rather distasteful parody slogan 'Where there is life, there's bugs' also was found too similar to the trademark slogan WHERE THERE IS LIEE, THERE'S BUD iChemicalCorp of America V. Anheuser-Busch, Inc. 1962).

Trademark requirements for slogans Trademark law in both the US and EU presumes that slogans are promotional advertising rather than brand identifiers so that slogans are not normally entitled to trademark protection. Eortunately for brand marketers, this presumption may be overcome with proof that consumers identify a particular slogan with a particular source of the product (a brand). 1 his is a key issue for trademark protection. Eor example, when Oldsmobile adopted the slogan 'Escape from the ordinary', the court denied relief to a clothing outfitter that claimed prior trademark rights in the same slogan. The court held that there was insufficient evidence that the slogan had secondary meaning for the outfitter in the minds of the public, or that the public were likely to be confused about source or sponsorship from these two uses. The court also found that the slogan was descriptive for the clothing outfitter because it carried outdoor clothing iNorm Thompson Outfitters, Inc. v. General Motors, Corp. 1971). The burden of proving that a slogan functions as a trademark is on the slogan user iMicrostrategy, Inc. v. Motorola, Inc. 2001). In order for a slogan to function as a trademark, it must stand out from advertising copy and must identify the product source rather than merely describe product characteristics. Longer phrases are less likely to perform this function (and more likely to be promotional) than shorter phrases iSmith V. M & B Sales and Manufacturing 1990). A good example of the difference between slogans that can function as trademarks and other phrases that don't function as trademark involves the 'redneck jokes' of comedian Jeff lùixworthy. When a T-shirt company copied several of his

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jokes, Foxworthy sued. The court held that the phrase at the beginning of all of his jokes, 'You might be a redneck ...' acted as a trademark and was well recognised by the public as identifying Mr Foxworthy. The rest of the numerous jokes (e.g. '... if your two year old has more teeth than you do') by themselves did not identify Mr Foxworthy to most of the public. However, since these jokes had been recorded in both books and recordings of live performances, they were held to be protected under copyright law iFoxworthy v. Custom Tees, Inc. 1995). Slogans may or may not include the brand name. A popular form of promoting the products or services in question is to devise slogans that combine the product brand name with a predominantly promotional or descriptive preflx or suffix (for example, British Airways: The World's Favourite Airline). If registration is sought with regard to the preflx or sufflx part of the slogan that does not include the brand name then the critical issue addressed is whether this part of the slogan is capable of distinguishing the goods or services on its own without the product brand name. In the case of Nestle' SA's Trade Mark Application (Have a Break) (2003), the courts considered whether HAVE A BREAK, which is a portion of the well-known slogan 'Have a break ... Have a Kit Kat', was sufficiently distinctive to identify the brand on its own. While lower courts found the shortened slogan to lack distinctive character, ultimately the European Court of Justice (ECJ) disagreed and concluded that the slogan was widely repeated as a trademark and that consumers would associate it with the KIT KAT brand even without the brand name. The slogan had acquired distinctiveness iNestláSA's Trade Mark Application (Have a Break) 2005). In the US, Hershey was able to register part of its jingle 'gimme a break' for Kit Kat bars without opposition (Reg. No. 2175506). Thus, marketers who are seeking trademark protection for a slogan by itself, even though the slogan is normally used next to the brand name, bear the burden of proving that the slogan identifles the brand in the minds of consumers when the brand name is not included. US law generally recognises four categories of trademark: descriptive, suggestive, arbitrary and fanciful iAbercrombie & Fitch Co. v. Hunting World, Inc. 1976). The latter two, such as Apple Records and Xerox respectively, as brand names are inherently distinctive because the mark has no prior association or meaning for the products using the marks. However, it is difficult to image a fanciful slogan because it would have no promotional

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meaning. Arbitrary slogans are rare for the same reason, but are possible. In 1952, a US court declared the slogan T H E EATE OE A EABRIC HANGS BY A THREAD for rayon yarn to be arbitrary and therefore inherently distinctive (Grover 1991). INVEST IN AN AMERICAN TRADITION similarly has been found to be an arbitrary slogan for apparel {Urgent Gear, Incv. Savoia 2001). European law also recognises the importance of both inherent and acquired distinctiveness. A European example of an inherently distinctive (arbitrary in US parlance) slogan would be LA Chemise Lacoste v. Turkish Trade Mark Institute (2003), where the applicant sought to register the slogan BECOME WHAT YOU ARE for a range of goods in Turkey. The appellate court in Turkey allowed the application on the ground that it was clear that none of the goods or services had any connection with the slogan in question in terms of its meaning in the English language and, hence, the distinctive character of the slogan was established. Einally, Nike's slogan, JUST DO IT, was found to be arbitrary for apparel by a trial court {Nike, Inc. v. Just Did It Enterprises 1993). However, an argument can be made that it is suggestive when applied to athletic equipment and footwear. Most slogans will either be suggestive or descriptive. The former may still be considered inherently distinctive, but the latter is not and will not be protected as a trademark until proven to identify a single brand or product source in the minds of consumers. Eor example, after the 1952 rayon thread decision, the US Patent and Trademark Office (USPTO) began to register clever marks with double meanings such as TOPS EOR GOOD DRINKS by a bottle cap company and NO BONES ABOUT IT for a boneless ham. These marks would qualify as suggestive rather than merely descriptive. Einally in 1970, a court upheld the registration of Clairol's famous slogan, HAIR COLOR SO NATURAL ONLY HER HAIRDRESSER KNOWS EOR SURE. While the court agreed with the USPTO that the slogan was descriptive, it was persuaded by evidence that consumers identified the mark with the Clairol brand (Grover 1991). In Europe, marketers may seek individual national registrations within the EU, or they may apply for a Community Trademark with the Office of Harmonization in the Internal Market (OHIM) or both. The community trademark is a single trademark that operates for the whole of the European Community.

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In the EU, although not mentioned in the Community Trademark Directive, a slogan also may be registered as a trademark provided that it is 'capable of distinguishing the goods or services of one undertaking from those of other undertakings' (Section 1(1), UK Trade Marks Act 1994). In general, the Registrar of Trade Mark Offices in the EU member countries may refuse the application if it does not satisfy the definition of a trademark. Thus, in the US, there is a single continuum of inherent trademark distinctiveness from descriptive, suggestive, arbitrary and fanciful. While the EU also recognises inherent distinctiveness, it also may separately find a mark incapable of distinguishing goods or services. Eor example, the slogan LIVE RICHLY has been a registered trademark for financial services in the US since 2003 (US Reg. 2795315). However, the European Court of Eirst Instance (CEI) denied it EU registration simply because it doubted it would function as a trademark in the minds of consumers iCiticorp V. OH IM 2005). Thus it appears that, at least for slogans, the EU will not automatically register a slogan that has sufficient distinctiveness to go beyond being merely descriptive. Most recently, the ECJ has signalled a more welcoming attitude towards slogans. Audi was able to register its slogan VORSPRUNG DURCH TECHNIK (ADVANTAGE THROUGH TECHNOLOGY) as a Community Trademark for vehicles in 2001 (No. 621086). In 2003, it then applied to register the mark in additional industry categories, but registration was denied because the slogan was merely laudatory and lacked distinctiveness, despite the acquired distinctiveness of the slogan for vehicles. Finally, in January 2010, the ECJ allowed the additional registrations. The ECJ agreed with the General Court that the phrase could have several meanings, was effectively a play on words and imaginative, and therefore memorable. It disagreed with the General Court that a slogan also had to be immediately perceptible as an indication of source. The General Court held that this slogan most likely would first be perceived as laudatory rather than an indicator of source. The ECJ noted that marks could be laudatory and promotional and still indicate origin, and it chastised the General Court for attempting to impose stricter requirements for slogans than for other types of mark iAudi AG v. OHIM 2010). The OHIM or European countries also may refuse to register a slogan if it falls foul of any of the absolute (signs that do not satisfy the definition of a trademark; marks devoid of distinctiveness, descriptive

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marks, generic terms or customary trade terms, immoral or illegal marks) or relative (conflicts with an earlier trademark or earlier common law right) grounds of refusal stipulated under the members' national laws (European Community Council Directive 89/04). The US has similar bars to trademark registration (15 USC. §1052).

Conceptual map for advertisers Figure 1 shows a conceptual map that visually represents the protection of slogans as trademarks. The horizontal axis indicates the level of promotional/descriptive qualities, while the vertical axis indicates the level of distinctiveness. Mapping along these two axes, we suggest that ad slogans can fall into clusters of (a) higher promotional value (indicates greater likelihood of effectiveness as marketing tool) and lower distinctiveness, or

Figure 1: Conceptual map of the protection of ad slogans as trademarks

Slogans that possess strong secondary meaning as trademarks but also are promotional

(b) Slogans that convey little promotional value but are distinctive. Not desirable, but may be protected as trademarks

Acquired distinctiveness through use (c) Slogans that are only suggestively promotional and so may be registered as trademarks

(a) Slogans that are so promotional that they cannot be perceived as anything other than advertising. Desirable but not protected as trademarks

Promotional value

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INTERNATIONAL JOURNAL OE ADVERTISING, 2010, 29(3)

(b) greater distinctiveness, which indicates more likelihood of trademark protection but may be of low promotional value. The final cluster (c) includes slogans that are somewhat distinctive and somewhat promotional. Eor this group, we suggest enhancing both acquired trademark strength and promotional value through increased communication ofthe slogan.

Slogans high in promotional value but low in distinctiveness Erom a marketing perspective, this group of slogans is perhaps most effective in communicating the desired message across to consumers as they are laudatory, descriptive, and promote the goods and services sold under these slogans. However, consumers probably do not perceive these slogans as associated with a particular product or service. Even if they do, they may not perceive these slogans as indications of source or origin in the marketplace. As these slogans cannot fulfil the primary function of source indicators, they are low in distinctiveness and have a low probability of being protected as trademarks. The vulnerability of this group of slogans to being imitated by competitors is particularly acute in the case of marketers adopting these high promotional slogans with low distinctiveness to launch new products or services. Thus, these slogans are perhaps the most valuable and effective to marketers, and it is this group of slogans that they should seek legal exclusivity over. But, from a public policy perspective, since these slogans are promotional by nature, they should remain free for all traders to adopt and no one particular trader should obtain exclusivity over them. To gain exclusivity, marketers need to utilise more creative copy, and they need to modify the slogan to be less descriptive and laudatory so that it is unusual and distinctive in presentation.

Slogans low in promotional value but high in distinctiveness Slogans that do not carry a promotional message but distinctively identify a particular source or brand of goods fall within this category. The earlier example of the Turkish trademark BECOME WHAT YOU ARE in La Chemise Lacoste v Turkish Trade Mark Institute 2003 is perhaps a good illustration. However, a quick survey ofthe trademark registrations in the US and in the EU reveals that registrations of such slogan trademarks are few and far between. The conspicuous absence of this group of advertis-

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ing slogans is consistent with the prevailing preference for slogans that are high in promotional value by marketers as they are more effective marketing tools, even if they may not receive trademark protection. The irony, of course, is that the minor amount of promotion and laudation mean these slogans are likely to receive trademark protection, perhaps even before actual secondary meaning with consumers is established. Marketers should therefore also consider this group of slogans in developing their overall brand and marketing strategies, as they present great potential to be excellent branding tools like Nike's 'Just do it' and at the same time stand a very high chance of being protected by trademarks. One suggestion is to utilise this group of slogans with an existing strong brand name already strongly associated by consumers with particular products or services. This will help overcome the inherently low promotional value in the slogans and quickly propel them to the categories of effective marketing or branding tools. Companies with a strong brand name with multiple lines of products or services are most suited to adopting this strategy.

Slogans that are both promotional and distinctive Marketers who seek a promotional slogan but also want trademark protection should consider two possible strategies. First, as suggested in Figure 1, a slogan that is not purely descriptive can receive trademark protection if it is sufficiently promoted so that it gains secondary meaning in the minds of consumers. Marketers can initially utilise the slogans in marketing communications, whether with or without trademark registration, to educate consumers to identify the slogan as an indication of the source of commercial origin of the products. Only when this link has been established should the companies seek registration (at least on the principle register in the US - descriptive slogans can receive some trademark protection by being registered on the supplemental register). This strategy of acquiring the trademark function through use is possible because trademark laws in the US and the EU both allow for the registration and protection of marks that on the face of it are descriptive and non-distinctive, if the marketer can prove the slogan functions as a trademark to identify a single source or brand of the goods. Such proof would ideally include a strong consumer survey showing that a substantial percentage of consumers identify the

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slogan as a source identifier. Courts and registration authorities will also consider evidence of substantial promotional expenditures. The second strategy is simply to modify the wording of a descriptive 1 slogan to be more distinctive by selecting unusual or unexpected words I or phrases. Once the wording of the slogan has become distinctive, it will be easier to register or protect it as a trademark, although the presumption against trademark protection for slogans will still apply. This strategy is discussed in more detail in the following section.

Marketing guidelines Eigure 1 suggests the importance of developing slogans that are sufficiently distinctive for trademark protection. Despite differences between EU and US law in this regard, there are sufficient commonalities to suggest a single set of guidelines for marketers to use when developing slogans to increase the probability that they will be found distinctive. Marketers must be concerned with two issues regarding slogan distinctiveness: subject and wording. Eor example, purely laudatory slogans (also known as advertising puffery) have both a non-distinctive subject (the brand generally) and non-distinctive wording (vague praise). Such slogans (e.g. 'We're number one') are not eligible for trademark protection. However, by narrowing the subject to something specific about the brand - even better if a non-primary attribute or characteristic - or changing the wording to be more distinctive than vague praise, a slogan can be sufficiently distinctive for trademark protection. These guidelines are based on the arguments of the European Advocate General in OHIM v. Wm. Wrigley Jr Company (2003). Figure 2 illustrates this concept and more specific guidelines are developed below. As already noted, trademarks also may not be deceptive. Avoiding deceptiveness is our final guideline for marketers.

Avoid vague puffery (laudation) Puffery is a well-established form of promotion that tends to avoid the strictures against misleading advertising because it says nothing factual (Petty 1997). However, trademark law does not protect puffery such as 'America's freshest ice cream' (Grover 1991), 'Number one in floor care' {Hoover Co. v. Royal Appliance Mfg Co. 2001) or 'The player's choice' for

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Figure 2: Conceptual map of slogan distinctiveness

Slogans with distinctive wording such as 'America's best chew'

Slogans with unusual wording and subject such as 'Plop, plop, fizz, fizz, oh what a relief it is'

Slogans with distinctive subjects such as 'Top breeders recommend It'

Distinctive subject

musical instrument strings in Europe (Byrt 2003). In 1988, the Ringling Brothers' Circus won a US 'dilution by blurring' case against a firm proclaiming 'The greatest used car show on earth' iRingling Bros-Bamum & Bailey Combined Shows, Inc. v. Celozzi-Ettleson Chevrolet, Inc. 1988). However, in other cases, Barnum has been less successful because the slogan is laudatory and courts are reluctant to restrict the use of the phrase 'The greatest on earth.' US courts allowed the use of slogans 'The greatest bar on earth', 'The greatest snow on earth' and 'The great show on earth isn't' iRingling Bros-Bamum & Bailey Combined Shows, Inc. v. B.E. Windows Corp. 1996; Ringling Bros-Bamum & Bailey Combined Shows, Inc. V. Utah Div. of Travel Dev. 1999; Ringling Bros-Bamum & Bailey Combined Shows, Inc. V. Chandris American Lines, Inc. 1971). The courts found little likelihood of confusion that consumers would think the circus licensed or approved the use of phrases similar to its slogan under these circum-

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Stances. Hammond and Schmitz (2003) note that the EU may be tougher than the US in this regard. They cite the difficulty PT. Barnum also had registering its slogan 'The greatest show on earth' as a European Community Trademark, although the Board of Appeal ultimately allowed registration because the slogan was distinctive in the minds of consumers identifying the circus (Byrt 2003). In Visa International Service Association's Application (2003), Visa International Service Association sought to register the slogan 'The world's best way to pay and be paid' as a Community Trademark for financial services. Visa's application was rejected. The Appeal Board at OHIM ruled that the slogan was not fanciful and imaginative. The rhyme between the single-syllabus words, 'way', 'pay' and 'paid', was insufficient to endow the slogan with the kind of arti.stic merit necessary to render it distinctive. The Appeal Board also found that the rhyme was obvious and banal, and did not detract from the crude directness of the statement in the slogan that its payment services were the best in the world. In other words, the slogan was only laudatory in nature. Similarly, the Court of First Instance in Sykes Enterprises, Inc. v. Office of Harmonization in the Internal Market (OHIM) (2003) took a conservative and cautious approach in its appraisal of the slogan REAL PEOPLE, REAL SOLUTIONS for telemarketing services. The trademark examiner refused the trademark application on the ground that the sign was not distinctive. The Court of First Instance held that slogans should not be denied registration simply because they serve as indications of quality or incitements to purchase. However, when a sign fulfils these other functions, it is distinctive for trademark registration only if it may be perceived immediately as an indication of the commercial origin. That is to say, when the sign has multiple functions, the predominant function must be that of a trademark in order to secure registration. It found the slogan REAL PEOPLE, REAL SOLUTIONS to be composed of commonplace words that are understood by the public as a simple laudatory formula and not as an indication of the commercial origin of the services in question. Trademark registration refusal was upheld. As noted above, a recent 2010 ECJ decision appears to have overturned the requirement that a slogan be immediately perceived as an indication of origin {AudiAG v. OHIM 2010).

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Adopt unusual words or phrasing Courts in general are inclined to disallow registration of words or their combination that other traders fairly want to use to describe their products or services. Therefore, it is advisable for marketers and advertisers to avoid adopting such inherently descriptive, common terms. Examples of such descriptive terms include 'sweet' for dessert sauces and syrups, 'beautiful' for cosmetics, 'economical' for energy-consuming products, and 'powerful' for cars. Slight changes in wording from puffery may be sufficient for trademark protection, such as T H E EIRST NAME IN ELOOR CARE as opposed to 'Number one in fioor care' iHooverCo. v. Royal Appliance Mfg Co. 2001) or AMERICA'S BESl^ CHEW - using 'chew' for chewing tobacco was found to advance the slogan beyond merely descriptive (Grover 1991). The ECJ, in the recent case of Procter & Gamble Company v. OHIM (BABY-DRY) (2002), set a low threshold for registration of descriptive trademarks so that others comprising descriptive words and expressions would qualify for registration if they differ slightly from everyday descriptive usages. Of the mark BABY-DRY for diapers, the ECJ found that, even though individually the words 'baby' and 'dry' could be used to describe diapers, once they are placed together in the order and form of BABY-DRY, they cease to be descriptive. The reason was that it was unlikely that other brands would use this combination of words to describe diapers. The court noted that 'any perceptible difference between the combination of words submitted for registration and the terms used in the common parlance of the relevant class of customers to designate the goods or services or their essential characteristics is apt to confer distinctive character on the word combination enabling it to be registered as a trade mark' (emphasis added) iProcter & Gamble Company v. OHIM (BABY-DRY) 2002, para. 40). In contrast, one year later, the ECJ found the trade name 'Doublemint', registered in the US since 1915 (Reg. No. 0102001), to be merely descriptive. In OHIM V. Wm. Wrigley Jr Company (2003), the ECJ repeated the prohibition of the registration of exclusively descriptive signs. It noted that the public interest is best served when such signs and indications remain free to be used by all. Its decision was based on the Advocate General's proposal of three criteria to be used to determine where the

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mark should ultimately lie on this sliding scale between mere description of a characteristic and suggestive allusion to it. First, how does the term relate to the product or one of its characteristics - is it more factual and objective or more imaginative and subjective.? If it is more factual, the term will lie closer to the descriptive end of the scale and is less likely to qualify for registration. Second, how is the term perceived - is it more ordinary, definite and down to earth.? If so, the term will lie closer to the descriptive end of the scale and is less likely to qualify as a trademark. Third, how important is the characteristic being designated - is it essential or central to the product.? If so, the term will be descriptive rather than suggestive and therefore less likely to be considered a trademark. Applying these criteria, the Advocate General came to the conclusion that 'Doublemint' should not be registered unless it has in fact acquired distinctiveness. He did not regard it as a 'lexical invention' like BABYDRY, which he thought was rightly held to be registered. The ECJ, following this opinion, agreed with the First Board of Appeal at OHIM that the name 'Doublemint' should not be registered, and annulled the Court of First Instance's decision. Choose a distinctive subject Puffery refers vaguely and generally to the brand or product, with little speciflc information. Slogans seeking trademark protection should strive to be both speciflc and unusual in their focus. For example, in the case of Masterfoods Ltd v. Controller of Patents, Designs and Trade Marks (2003),

the slogans in question were TOP BREEDERS RECOMMEND IT and DEVELOPED BY VETS, TOP BREEDERS RECOMMEND IT for animal foods. The Controller of Patents, Designs and Trade Marks refused 1 the applications of both slogans on the ground that they were devoid of any distinctive character. The objections raised by the Controller for both slogans were that they were composed of ordinary English words and were statements of fact that could be validly made by any other producers of dog food that wish to attract customers by claiming their product to be recommended by top breeders. On appeal, the High Court of Ireland found the slogans to be inherently distinctive because they could not be viewed as a normal way of referring to pet food. The court also found that the slogans did not represent the essential characteristics of pet food as a matter

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of everyday common speech. Eurthermore, no other manufacturer of pet food used these slogans. In the US, Kal Kan registered the similar slogans RECOMMENDED BY TOP BREEDERS and DEVELOPED WITH VETS, RECOMMENDED BY 1 OP BREEDERS without opposition (Reg. Nos 1557104 and 2073460, respectively). One way to create a distinctive slogan is to focus it on limited aspects of a product or service, but not the overall product or service itself. Eor example, the USPTO has registered WE SMILE MORE for the Marriott Corporation, demonstrating its acceptance of'ordinary word' slogans. The PTO found that the slogan was suggestive of the facial expression of the service providers rather than merely descriptive of the services being provided (Grover 1991). In contrast, the slogan: 'The baby bootie sock that will not kick off was found too descriptive of the primary brand feature to be registered (/// re Sandra Hosiery Mills 1967). Similarly, the tribunal in Clinique Laboratories, Inc.'s Application (1999) decided that the ordinary-word slogan BEAUTY ISN'T ABOUT LOOKING YOUNG BUT LOOKING GOOD was eligible for trademark protection. Although the slogan used common words to discuss common topics (e.g. beauty, looking good) for toiletries and body care preparations, the slogan did not describe the goods so much as announce a 'cosmetic philosophy'. Clinique disclaimed the exclusive use of the individual words contained within the slogan. The OHIM (Second Board of Appeal) ruled that originality is not a criterion for the registration of trademarks, and was persuaded to grant Clinique exclusivity to this composition of words. In Office for Harmonization in the Internal Market (OHIM) v. Erpo Mobelwerk GmbH (2004), the slogan DAS PRINZIP DER BEQUEMLICHKEIT (THE PRINCIPLE OE COMEORT) initially was judged to lack distinctive character and that, in order to function as a mark, it must possess an additional element of originality as the slogan in question was devoid of originality. In particular, the Third Board of Appeal pointed out that the slogan DAS PRINZIP DER BEQUEMLICHKEIT (THE PRINCIPLE OE COMFORT) lacked conceptual tension that would create surprise, and hence failed to make a striking impression. On appeal, the contention that slogans must possess an element of originality or surprise was firmly rejected by both the Court of F'irst Instance and the ECJ. The ECJ ruled that slogans could not be denied registration due to a lack of originality or surprise, and that the only test for assessing the distinctiveness of all

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categories of trademark was whether the mark fulfilled its function to act as a badge of origin. Hence the slogan was registered. Despite its use of ordinary words, this slogan is not purely descriptive of sofas and chairs, but rather suggests their quality. Table 2 summarises slogans that were protected as trademarks, while Table 3 presents slogans that were neither registered nor protected as trademarks. A simple conclusion from this analysis is that, by adopting both distinctive language and a distinctive subject for a slogan, marketers would be maximising their likelihood of obtaining trademark protection. Slogans must not be deceptive Both the US and EU prohibit the registration of mis-descriptive or deceptive slogans as trademarks. However, challenges on these grounds during registration are rare. Because slogans are a form of advertising, challenge for deceptiveness is more likely under advertising law. For example, the

Table 2: Slogans afforded trademark Status Product category

Jurisdiction

Ad slogan America's best chew

Chewing tobacco

US

Airline services

US

America's favorite way to fly

Home appliances

US

The first name in floor care

Entertainment

US

The greatest show on earth

Adhesives

US EU US US

The toughest glue on planet earth

US US

The shoes your feet have been aching for

Pet food Retail services Pizza Shoes Bottle caps Food (boneless ham) Hospitality Apparel Apparel

us us us us

Top breeders recommend it Always low prices Better ingredients. Better pizza

Tops for good drinks No bones about it We smile more Invest in an American tradition Just do it

EU US

Beauty isn't about looking young but looking good

Hair products Cosmetics

EU

Become what you are

Candy

EU

Have a break ('Give me a break' in US)

Toiletries and body care

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Hair color so natural only her hairdresser knows for sure


Table 3: Slogans denied trademark status Product category

Jurisdiction

Ad slogan

Ice cream

US

America's freshest ice cream

Musical instruments

EU

The player's choice*

Home appliances

US

Number one in floor care

Credit card services

EU

The world's best way to pay and be paid

Retail services

US

Why pay more?

Retail services

US

Brand names for less

Electric shavers

US

Proudly made in the USA

Telemarketing services

EU

Real people, real solutions*

Baby apparel

US

The baby bootie sock that will not kick off

Cleaning products

EU

Never clean your shower again*

Baking mix

US

We make i t you bake it

Financial services

EU

Live richly*

* Trademark status denied in Europe, but registration allowed in the US.

United States Federal Trade Commission (FTC) condemned advertising for Aspercreme, which proclaimed that Aspercreme concentrates 'all the strong relief of aspirin directly at the point of pain'. The FTC found the message was false because the product did not contain aspirin, and misleading because the advertiser had no clinical studies to support its claim that the product provided xc\\ci {Thompson Medical Co., Inc. v. FTC 1986). Advertising self-regulation also regulates misleading slogans. The National Advertising Division (NAD) of the Counsel of Better Business Bureaus supported Wal-Mart's argument that its slogan 'Always the low price. Always' was understood by consumers to mean it had a general policy of offering low prices, but did not mean it would always have the lowest prices on all items. The National Advertising Review Board, on appeal, however, felt it might be misleading, so Wal-Mart agreed to change its slogan to 'Always low prices' {Wal-MartStores, Inc. 1994). In contrast, Winn-Dixie's slogan of'Everyday lower prices', in conjunction with specific price comparisons to Wal-Mart prices, was thought to deceptively communicate that its prices generally were lower than those of Wal-Mart {Winn-Dixie Stores, Inc. 1996). Although slogans may be challenged as false advertising, because they are short and typically not very specific, they may be permitted as mere puffing - seller's talk too vague to be relied upon as a factual statement

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by consumers. Puffing generally is defined as a vague opinion of quality (e.g. 'Deluxe' or 'Best quality') as opposed to a statement of fact. Under trademark law, puffing would be considered self-laudatory. Yet even j claims that might be puffing must be interpreted within the context ofthe entire advertisement. Although 'best quality' is often considered puffing, . the ETC found that the advertising claim 'world's best' safety helmet was a factual statement about the level of protection provided by the helmet rather than puffing iPayless Drug Store Co. 1972). The ETC also found a claim that a brand of yoghurt was 'nature's perfect food that science made better' was a statement of fact rather than puffing iDannon Milk Products, Inc. 1962). In contrast, an ETC administrative law judge dismissed a complaint that the statement 'Everybody needs milk' was deceptive because ' some people are allergic to milk iCalifomia Milk Producers Advisory Bd 1979). Essentially it treated the slogan as puffing. Similarly, a court found that Pappa John's slogan 'Better ingredients. Better pizza' was puffing, if used on its own. However, the court noted that the slogan could contribute to a false or misleading message if used in advertising that factually discussed particular ingredients but communicated a false or misleading message about them iPizza Hut, Inc. v. Papa John's Int'l, Inc. 2000). The NAD referred a complaint to the government when an advertiser refused to cooperate after claiming to offer 'America's best online banking' and to be 'America's leading online banking service'. The NAD apparently supported the challenger, who argued that such slogans should be supported by current industry ratings iCommerce Bank 2004). The NAD also felt claims to be the 'No. 1 seller' should be substantiated by evidence iGeneralSteel Corp. 2003). In a case involving the slogan 'America's favorite way to fly', the NAD asserted that the slogan by itself could be merely a statement of corporate pride, but in the context of other statements that more passengers fiew this airline than any other, it was a statement of fact iEastem Airlines, Inc. 1982). This slogan was registered as a trademark in 1983 (Reg. No. 1227143), but cancelled in 1989. Similarly, the NAD recently held that the slogan T H E TOUGHEST GLUE ON PLANET EARTH (Reg. No. 0868481) was an unsubstantiated and therefore deceptive superiority claim rather than puffing as argued by the brand owner (National Advertising Division 2006). Taste claims are difficult to analyse. The NAD found the statement 'America's best loved coffee' to be puffing iKraft Foods, Inc. 1995). A

494


recent Lanham Act decision agreed, flnding the phrase 'America's favorite pasta' to be mere puffing, particularly in the context of the advertisement, which emphasised taste rather than sales data iAmerican Italian Pasta Co. v. New World Pasta Co. 2004). However, in an earlier case, the NAD treated statements - 'Taste it yourself and you'll agree Jolly Time is the world's favorite popcorn. The taste is why' - as a factual claim about taste that required substantiation iAmerican Pop Com Co. 1979). Finally, a series of three US court cases in the 1970s-1980s analysed slogans for copycat perfumes that took the form of'If you like [famous brand name product], you'll love [our copycat product].' Two cases allowed the use of such slogans, particularly when the maker of the copycat product is clearly disclosed and obviously different from the maker of the famous brand product. However, one court of appeal afflrmed a trial court flnding that the use of such a slogan, which included both company names and a disclaimer that the famous brand company was not related in any way to the copycat company, was confusing to consumers (Reed 1989).

Conclusion There is no doubt that, from a business viewpoint, slogans serve to promote brands and can add greatly to the market values of flrms (Mathur & Mathur 1995). Historically, European courts and tribunals have mixed views on the value of the promotional function of slogans and the signiflcance of this function as a contributing factor to the question of protecting slogans as trademarks. On one side, there are tribunals such as the one in Clinique Laboratories, Inc. 's Application 1999, which gave a positive appraisal of the promotional function of slogans as it has concluded that: Being regarded as a promotional text should ... be considered a positive property of the trade mark rather than a negative one, as it serves not only to identify the origin of the goods or services to which it relates but also a marketing function that draws attention to them. {Clinique Laboratories, Inc. 's Application 1999, para. 16)

This is certainly a favourable stance for slogans. If more courts come to share similar views with the tribunal in Clinique and adopt the more permissive view of the ECJ in Audi, it should become less of an uphill task for slogans to overcome the barriers of descriptiveness and lack of

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distinctive character through proof of extensive use as compared to other non-conventional marks such as colours and shapes. The US used to treat slogans with a similar scepticism as far as trademark registration is concerned. However, current practice is to treat slogans no differently than any other type of potential trademark. Slogans that are inherently distinctive are likely to be protected in the US. US courts have long recognised that trademarks are promotional, and they don't see an inherent conflict between promotional and distinctive. They simply focus on whether a slogan is distinctive and identifies the product source in order to decide whether to grant it trademark protection. However, as illustrated above, courts in both the EU and US have a tendency to find banal ly promotional slogans to be merely descriptive and therefore to lack distinctiveness. Once marketers understand that slogans will not receive the benefits of trademark protection if they are merely descriptive of product characteristics or clichés ('Total quality through excellence', 'Excellence through total quality' or 'Where quality counts'), they should develop a creative, memorable and non-deceptive slogan that distinctively describes the brand's unique selling proposition (Reeves 1961). Marketers have expressed similar ideas when they say that slogans work best when they reflect both the soul of the brand and the company's reason for being in business (Kiley 2004). We suggest the use of unique phrases or uncommon words in an unusual subject context to meet both marketing and legal requirements. Just as Warner-Lambert advertised its Certs brand mint in the US in the 1990s as being 'two mints in one' (both a breath mint and a candy mint), brand marketers need to be mindful that advertising slogans perform two functions as both a brand identifier and advertising promotion. With proper care in their development, slogans can not only perform these functions effectively, but also receive the significant protection from imitation that is provided by trademark law in both the EU and US. In addition, as this practice becomes more typical, trademark protection for slogans will become better accepted, continuing what seems to be a trend in both the US and EU, but with the latter a bit behind the former. Future research could extend our study to examine the regulatory environment for trademark protection in other jurisdictions, such as in emerging economies like China and India, where global brands are competing with


home-grown start-up brands that sometimes may deploy copycat marketing strategies. The strategies for trademark protection of slogans raised here also suggest another important area for future research: what sort of consumer evidence would convince registration authorities and courts that a particular slogan is distinctive.'' Consumer evidence is well accepted for proving whether advertising claims, including slogans, are deceptive and for proving that a trademark uniquely identifies a particular brand in the minds of consumers. In contrast, neither the marketing nor legal literature has suggested what sorts of consumer evidence on distinctiveness would be appropriate. Developing such evidence would help make decisions more consistent by de-emphasising the importance of a particular decision maker's opinion about distinctiveness.

References Aaker, D. (1996) Building Strong Brands. New York: Free Press. Aberrrombie & Fitch Co. v. Hunting World, Inc. (1976) 537 F2d 4 (2d Cir.). Alberto-Culver Co. v. Andrea Dumon, Inc. (1972) 466 F2d 707 (7th Cir.). Alreck, P.L. & Settle, R.B. (1999) Strategies for building constimer brand preference. Journal of Product & Brand Management, 8(2), pp. 130-144. American Direct Marketing, Inc. v. Azad Int'l, Inc. (1992) 783 F Supp. 84 (E.D.N.Y.). American Expre.) E.T.M.R. 84. Mathur, L.K. & Mathur, I. (1995) The effect of advertising slogan changes and the market value of firms. Joumal of Advertising Research, 35(1), pp. 59-65. Mem Co. v. Yardley of London, Inc. (1981) 212 USP.Q. 280 (S.D.N.Y.). Microstrategy, Inc. v. Motorola, Inc. (2001) 245 E3d 335 (4th Cir.). National Advertising Division (2006) Gorilla Glue and Elmers participate in NAD forum. NAD News, 16 May. Nestle'SA's Trade Mark Application (Have a Break) (2003) FSR 37 (High Court); [2004] FSR 2 (Court of Appeal) (2005) ETMR 96 (European Court of Justice). Nike, Inc. V. Just Did It Enterprises (1993) 6 E3d 1225 (7th Cir.). Norm Thompson Outfitters, Inc. v. General Motors Corp. (1971), 448 F.2d 1293 (9th Cir.). OHIM V. Erpo Mobelwerk GmbH (2004) Case C-64/02, ECR 1-10031. OHIMv Wm. WrigleyJr. Company (2003) ECR 1-12447. Olivära alkla Gilberto v. Frito-Lay, Inc. (2001), 251 E3d 56 (2d Cir.). Payless Drugstore Co. (1972) 82 E T C . 1473. Petty, R.D. (1997) Advertising law in the US and EU. Joumal of Public Policy & Marketing, 16(1), pp. 2-13. Pizza Hut, Inc. v. Papa John's Int'l, Inc. (2000) 227 E3d 489 (5th Cir.) cert, denied, 532 US 920 (2001). Procter & Gamble Company v OHIM (2002) Case C-383/99 P, E.T.M.R. 22 (ECJ).

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Ramsey, L.P. (2006) Intellectual property rights in advertising. Michigan Telecommunications and Technology Law Review, 12(Spring), pp. 189-263. Reed, D.M. (1989) Use of'like/love' slogans in advertising: is the trademark owner protected.' San Diego Law Review, 26(January), pp. 101-136. Reeves, R. (1961) Reality in Advertising. New York: Knopf. Rics, A. & Ries, L. (1998) The 22 Immutable Laws of Branding New York: Harper Business. Ringling Brvs-Bamum & Bailey Combined Shows, Inc. v. B.E. Windows Corp. (1996) 969 K Supp. 901 (S.D.N.Y.). Ringling Bros-Bamum & Bailey Combined Shows, Inc. v. Celozzi-Ettleson Chevrolet, Inc. (1988) 855 F.2d 480 (7th Cir.). Ringling fíros-Bamum & Bailey Combined Shows, Inc. v. Chandris American Lines, Inc. (1971) 321 K Supp. 707 (S.D.N.Y.). Ringling Bros-Bamum & Bailey Combined Shows, Inc. v. Utah Div. of Travel Dev. ( 1999) 170 K3d. 449 (4th Cir.). in re Sandra Ho.uery Mills (1967) 154 IJ.S>P.Q. 631 (TFAB). Sandj!, Taylor & Wood Co. v. The Quaker Oats Co. (1992) 978 F.2d 947 (7th Cir). Sinanidev. La Maison Cosmeo (1928) 44 T.L.R. 574 (United Kingdom). Sykes Enterpri.ies, Inc. v. Office of Harmonization in the Internal Market (2003) E. T.M.R. 57. Thompson Medical Co., Inc. v. FTC (1986) 791 F.2d 189 (C.A.D.C.) cert, denied, 479 US 1086(1987). Urgent Gear, Inc. v. Savoia (2001) 2001 WL 1577395, (N.D. Tex.). Visa Intemational Service Association s Application (2003) E.T.M.R. 263, Office for Harmonization in the Internal Market (First Board of Appeal). Wal-Mart Stores, Inc. (1994) NARB Report 77 (20 April). Wells, W., Moriarty, S., Burnett, J. & Lwin, M. (2006) Advertising: Principles and Effective IMC Practice. Pearson Prentice Hall: Upper Saddle River (NJ). Wheeler, A. (2003) Designing Brand Identity. Hoboken: John Wiley & Sons, Inc. Winn-Dixie Stores, Inc. (1996) Report of NARD Panel # 90 (26 September). Wonderlabs, Inc. vs. P&G Co. (1990) 728 F Supp. 1058 (S.D.N.Y). YouGottaFMt, Inc. v. Checkers Drive-ln Restaurants, Inc. (2003) 81 F"ed. Appx. 392 (2d Cir.).

About the authors Ross D. Petty is Professor of Marketing Law and holder of the Zwerling Eamily Term Chair at Babson College in Wellesley Massachusetts. He teaches undergraduate and MBA courses in marketing law and intellectual property law and strategy and in 2008 he won the Charles M. Hewlett Master Teacher from the Academy of Legal Studies in Business. Ross has published several book chapters and articles in numerous law and marketing journals. He is the author of The Impact of Advertising Law on Business

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INTERNATIONAL JOURNAL OF ADVERTISING, 2010, 29(3) I

, and Public Policy (Quorum 1992) and is currently writing Branding Law -A Guide for Brand Managers. His scholarly work has been recognised for excellence by the Academy of Legal Studies in Business, the Joumal of Public Policy & Marketing 2Lná Babson College.

Susanna H.S. Leong is an Associate Professor at the NUS Business School, National University of Singapore and is an Advocate & Solicitor of the Supreme Court of Singapore. Susanna received her LL.B (Hons) from National University of Singapore and her LL.M (with Merit) from University College London, University of London. She teaches businessrelated law courses such as contract, sale of goods and intellectual property to undergraduate and graduate business students. Her research interests are in intellectual property and technology-related laws. She has published in several international and local academic journals. Susanna was formerly the Vice-Dean at the Graduate Studies Office, NUS Business School. She is a Senior Fellow at the Intellectual Property Academy of Singapore and a member of The World Intellectual Property Organization (WIPO) Arbitration and Mediation Centre's Domain Name Panel and of The Regional Centre for Arbitration, Kuala Lumpur (RCAKL) Panel. May O. Lwin is Division Head & Associate Professor at the Wee Kim Wee School of Communication and Information, Nanyang Technological University in Singapore. Her research areas include cross-cultural and sensory advertising and issues related to health, privacy and regulations. May has led major research projects in the various areas of strategic communications as well as social and health communications. She has published in many international journals and consulted for major corporations and government sectors. She currently serves on the Medical and Dental Board at the Health Promotion Board, Breast Cancer Advisory Board and the National Heart Foundation Board. Address correspondence to: Ross D. Petty, Division of Accounting and Law, Babson College, 231 Forest, Street, Babson Park, MA 02457-0310, USA. Email: [email protected]

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