By Linda Tancs

A recent case handed down by the U.S. Court of Appeals for the Second Circuit illustrates the sometimes sticky wicket encountered between ad agencies and would-be clients.  Here’s the scenario:  agent makes a pitch to credit card companies to personalize their cards with cardholder photographs using the catchphrase “My Life.  My Card.”  A credit card company passes on a business relationship with the agent but uses the catchphrase in its advertising to much success.  Agent protected the phrase with a trademark filing.  Can the agent claim trademark infringement on use of the phrase by the company?  Court’s answer: No.  Why?  Because a trademark’s inherent nature is to provide direction as to the source or origin of a product or service.  A slogan used as an attention grabber in a pitch letter is not being used for this purpose.  The slogan’s use benefits the card issuer, the purveyor of the actual product or service to which the slogan attaches.  Therefore, the card issuer has trademark rights to the phrase, not the agent.  The court’s decision is in keeping with a long line of cases holding that one who creates a slogan for another’s use (as ad agencies do) is not the trademark owner of the slogan in connection with the goods or services to which it will apply and cannot claim rights to it as a trademark owner.  So consider that the next time you fancy an attention-inducing pitch but not the agent pitching it.  Of course, a signed waiver might even prevent a walk to the courthouse.

This post is not intended as legal advice. Readers should obtain legal advice that is particular to their needs.

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