A few weeks ago, the Washington Post began using a new slogan with its online masthead: Democracy Dies in Darkness. NOTE: This post is not political in any manner, and it does not matter whether you like or dislike the content in the Post! The slogan provides a good case study example for how a new trademark (brand name, logo, or slogan) should be handled.
- On it’s face, the slogan is good because it is catchy and memorable. It uses a semantic tool, alliteration, with all the three main words beginning with the “D” sound. Alliteration also is a trademark legal tool, as in general it makes a phrase more unique and stronger and easier to protect. For example, alliterative phrases may escape disclaimer requirements for descriptive words. See Effective Office Action Responses presentation materials. See also, TMEP Section 1213.05(e).
- The “Democracy Dies in Darkness” phrase also appears to be unique and was either coined by the Washington Post, or first used in connection with news coverage by them. Uniqueness is an excellent feature for creating a strong trademark and slogan, one that should generally be capabble of registration with the USPTO. As of this writing on March 5, 2017 there are no USPTO applications or registrations featuring any combination of two or more of the three key words in the slogan: *democ* and *dark*, or *democ* and *die*, or *die* and *dark*.
- The Post secured the democracydiesindarkeness.com domain name on February 16th, a few days before the launch of the slogan online. Even if a business has not plans to use a correlating domain name, it is worth the expense to own it and make sure no one else acquires it.
However, a search of the USPTO trademark records using the TESS database (as of this writing on March 5, 2017) shows that the Post has not filed to protect and register this slogan. The Post owns more the 60 current USPTO trademark registrations and applications. It’s registration of FEDERAL DIARY was issued in 1935!
The bad: by missing (or delaying) the benefits of a USPTO application and registration, the Post has created some unnecessary risks, such as:
- Registration with the USPTO provides a wide range of benefits, including use of the ® symbol, appearing in the public database of USPTO trademark records, a presumption of ownership, and the ability to sue for infringement in federal court and to seek trebled damages plus attorney fees. The Post is not yet on its way to taking advantage of those protections.
- Given the ease of use of the USPTO.gov TESS search, and the number of new trademark applicants and developers of new product and service brand names (and their attorneys) who use it, appearing in the USPTO’s online database is more valuable than ever. Just being there (in the USPTO registry) may prevent someone who otherwise would have adopted a similar name or slogan for a similar product or service from going forward with that name or slogan.
- If someone else was to file with the USPTO to register the slogan before the Post files, the Post may still be able to block the application. However, for the Post to do so cost them money and time. In this hypothetical, had the Post filed with the USPTO first, the USPTO would likely block and subsequent similar trademark filing on its own – at no cost to the Post.
- Registration of a slogan also creates a tangible asset that can be sold, licenses, or otherwise assessed a real financial value.
- Registration, or even a pending application, can make dealing with domain name and social media name conflicts easier, faster, and cheaper in general.
- The ideal way to protect a new brand name or slogan is to file even before it is used publicly for the first time. That way, the risk of someone learning of it and then filing with the USPTO or taking some other action to try to assert rights in the name is avoided. Such a UPSTO trademark application is called an “intent to use” filing.
- If someone uses the slogan improperly and the Post decides to send a “cease and desist” letter, such a letter will generally be much stronger, and more effective, if there is a USPTO record to support the trademark claims.
These risks would be true for any new trademark, brand name, or slogan launch, but are magnified by the volume of exposure the Post online gets. While the Post came up with a catchy and seemingly unique slogan, it failed to take timely steps to protect the investment in that slogan.