Lettuce Turnip The Beat - Protecting Slogans as Trademarks

Gorski's Design

Gorski's Design

Gymboree's Design

Gymboree's Design

Lettuce Turnip the Beet - how cute is that for a kid's t-shirt?  Adorable. Not so adorable for Gymboree who was sued by an Etsy-based retailer for both trademark and copyright infringement.

Copyright Does Not Protect Slogans

Even if a name, title, or short phrase is novel or distinctive or lends itself to a play on words, it cannot be protected by copyright.
— Copyright Office Circular 34

The Northern District of California court ruled a phrase is not protected by copyright. Copyright law does not protect names, titles, or short phrases or expressions. That decision is right on target. There simply is not sufficient originality in short phrases to have copyright protection.

Trademark Can Protect A Slogan or Phrase

Trademark is the route to go to protect your slogan or phrase. Simply putting a catchy phrase on a t-shirt does not convey to the world that you are using the phrase as a trademark or brand. In fact, if you try to register a phrase as a trademark and the only thing you submit as your evidence of use is a t-shirt with the phrase across the front or back, you will receive an office action denying your trademark application stating your slogan is "merely ornamental" or decorative in nature. 

Trademark specimen of use for t-shirts.  Notice the trademark is in the neck and on the attached hang-tag.

Trademark specimen of use for t-shirts.  Notice the trademark is in the neck and on the attached hang-tag.

I was curious, how did the Etsy-based retailer get a trademark registration for the phrase. She filed with the trademark office a picture of the t-shirt with a hang-tag attached showing the trademark.  The trademark is also on the neck of the shirt. It's important that you have a specimen of use with the trademark attached to either the product packaging or to the garment. It might be on a hang-tag, imprinted in the collar or waist band of a garment, or be a small, neat and discrete wording or design located on the pocket or breast portion of the t-shirt.

The case is still pending regarding the trademark infringement action.  Gorski v. Gymboree Corp., 2014 WL 3533324,  No. 14-CV-01314 (N.D. Cal. July 16, 2014).