"Product slogans so descriptive, only the federal courts know for sure!"

Posted by Charles Colman

Regular readers of Women's Wear Daily know that Thursday is menswear day; accordingly, WWD has dedicated a weirdly large portion of today's issue to the retailer Men's Wearhouse.  Or maybe not so weird, if there's any truth to WWD's declaration that "[o]ne out of every five suits in the U.S. is bought at a Men's Wearhouse store."  According to a Stanford business school professor, the man behind the largest men's specialty store chain in the country, George Zimmer, is "like a rock star . . . because of the ads" in which Zimmer assures the viewer "You're going to love the way you look, I guarantee it."  (Or sometimes, just the last bit.)  First-year law students might jump at the opportunity to debate whether the slogan is an enforceable warranty, or "mere puffery," but the question is rendered largely moot by MW's explicit satisfaction-or-your-money-back policy:



No, silly 1Ls, LAW OF FASHION is interested in the trademark issues surrounding MW's slogan, which Zimmer says is "one of the most hackneyed expressions ever used."  (Listen closely for the sound of the company's IP lawyers cringing.)  Matthew Stringer, MW's Senior Vice President of Marketing, elaborates, "[Zimmer took] a common phrase and turned it into an iconic tag that is immediately recognizable.  Everyone knows it."  Stringer may be right.

LOF hasn't uncovered any cases in which MW's trademark rights in its "iconic" slogan were contested (though MW did have a nasty false advertising row in 1990 with C&R Clothiers, which MW later bought out.)  But other companies have most certainly litigated slogans; mere days ago, Hollander Home Fashions went after La-Z-Boy for the latter's "Live Life Comfortably" tagline, which Hollander claims infringes its trademark rights in its registered slogan, "Live Comfortably."

The question, of course, is at what point a slogan is so descriptive that it would simply be unreasonable to let just one company use it.  As federal judge Pierre Leval (something of an intellectual property connoisseur) explained in the 1990 case of United States Shoe Corp. v. Brown Group:

"[When applied properly, the benefits of trademark law] are great, and because potential identifying marks exist in virtually inexhaustible supply, the cost of the [linguistic] monopoly to society is minimal. The cost-free aspect of the trademark depends, however, on the exclusivity being practiced only over identifiers that are not needed by others for trade communication. If only one manufacturer of candy were permitted to call the product 'candy'; if only one were permitted to say that it is 'lemon flavored,' then society would not be enriched but impoverished. Society would be deprived of useful information about competing products, and one supplier would receive an unfair and unjustified advantage over competitors."

The Brown Group case was brought by the owner of the Easy Spirit brand, which advertised certain footwear using the slogan, "Looks Like a Pump, Feels Like a Sneaker."  It sought a preliminary injunction against the manufacturer of NaturalSport dress pumps (apparently no longer in production), which had been promoted with the similar phrase "feels like a sneaker."  In reaching a ruling, Judge Leval assumed arguendo that Easy Spirit's "heavy advertising has succeeded in establishing an association in the minds of the public between its descriptive slogan and its product" -- i.e., that crucial "secondary meaning" that LOF has harped on again and again.  Judge Leval nevertheless found Easy Spirit was unlikely to prevail on its infringement claim because, consistent with Section 33(b)(4) of the Lanham Act, the "defendant [was] not using the phrase ["feels like a sneaker"] to indicate origin or source," but rather "in a descriptive sense, claiming a virtue of the product."  As such, the Brown Group was protected by the so-called "statutory fair use" defense (which, again, is totally different from the fair use doctrine in copyright law.)

Two decades earlier, in Roux Laboratories v. Clairol Inc., the predecessor to the Court of Appeals for the Federal Circuit was asked to invalidate trademark protection for Clairol's slogan "Hair Color So Natural, Only Her Hairdresser Knows For Sure."  Clairol's competitor, Roux, urged the court that if Clairol's trademark registration for the slogan was upheld, the latter "could employ said registration to harass it and its customers who might utilize that phrase or others similar to it in connection with the sale and advertising of similar merchandise."

The court was unsympathetic to this argument -- essentially the same fair use theory that later proved successful in Brown Group -- perhaps in part due to evidence in the record showing that Clairol had spent $22 million advertising the slogan, resulting in "more than a billion audio impressions" on consumers throughout the U.S.  The court acknowledged that "[Clairol's] slogan is no doubt laudatory and somewhat descriptive of the desired result to be obtained from the use of applicant's product" but ruled that "it is not so highly laudatory or descriptive as to be incapable of acquiring distinctiveness as a trademark."  Further, Roux's assertion that it would be hamstrung by an inability to use Clairol's slogan (or close variations) was belied by evidence in the record indicating "that Roux has used several other descriptive expressions of somewhat similar import in its advertising copy to describe similar attributes of its goods."  Props to the junior associate (now likely a partner, if not retired) who undoubtedly sifted through countless Roux advertisements to compile this damning evidence -- it may have won the case for Clairol.

The Roux court did throw this crumb to the losers: "The determination of whether a given slogan is a registrable trademark is a matter which historically has not been free of difficulty.  Nor is it an easy task here."  Small consolation for Roux, but a good passage for future slogan-crafters to mull over.  As for Men's Wearhouse, and especially Hollander, the attorney behind LOF would probably have urged each company to select less descriptive slogans... but that ship has long since sailed.  In any event, it looks like MW is doing just fine, descriptiveness be damned.

[This post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities.  Any views expressed herein are those of the writer on the particular date of this post, and should not necessarily be attributed to his law firm or its clients.]