Abstract
Trademarks and slogans often operate on the same communicative level, but they follow different legal logics. A slogan may be effective from an advertising perspective and, at the same time, fail to meet the minimum threshold of distinctiveness required for registration as a trademark.
This article examines how the EUIPO assesses slogans, clarifying the distinction between their promotional function and their identifying function, and illustrating the criteria used to determine when a phrase can be appropriated as a distinctive sign. Through the Common Practice and the main practical examples, the article highlights the often non-intuitive boundary between an advertising claim and a registrable trademark.
Finally, attention shifts to the design of slogans, showing why registrability is not merely a final check, but a constraint that influences creative choices from the very beginning.
Why can an effective slogan be unregistrable?
A slogan is almost always born as an advertising tool. Its purpose is to strike, to be remembered, to convey a rapid message about a product or service. In marketing terms, its goal is clear: to persuade, motivate, enhance value.
In trademark law, however, the question posed by the Office is different. It is not: “Does it work as a message?” It is: “Does this phrase allow consumers to understand who provides those goods or services?”
This is the first – and most frequent – misunderstanding. Many slogans are conceived and evaluated as if branding and advertising were the same thing. In reality, they serve different functions. Advertising communicates content; a trademark identifies origin. A slogan may do both, but not automatically.
When a phrase exhausts itself in its promotional meaning — praise, promise, invitation to action — it tends to be perceived as a mere claim. In such cases, however effective it may be communicatively, it does not perform the essential function of a trademark, because it is not read as a sign that “signs” an undertaking or an offer.
The point, therefore, is not whether a slogan promotes. All slogans do, by definition. The point is whether, beyond promoting, it can also function as an element of identity – that is, whether the public can recognize and remember it not only as a sentence, but as an indicator of commercial origin.
Put simply: a slogan may “sell,” but it must also be able to do something else – something different from selling. It must detach itself from the immediate message and remain as a sign.
This is where many advertising-born phrases encounter difficulties when one attempts to register them as trademarks. The more direct, clear, and self-explanatory a slogan is in describing an advantage, the more easily it will be perceived as interchangeable with countless similar formulations in the same sector. And what is interchangeable, in trademark law, is rarely distinctive.
The EUIPO Common Practice addresses precisely this issue. It does not introduce new rules, nor does it automatically elevate slogans to trademarks. Rather, it clarifies how the Office reads a phrase and which elements may allow it to overcome the most frequent obstacle: being seen as pure promotional communication.
In other words, Common Practice does not say which slogans work creatively. It says when a phrase may be appropriated as a trademark because, in the way it is perceived by the public, it does not exhaust itself in the message but also performs an identifying function.
And that is the right starting point, even before examining the criteria and indicators used by examiners.
Which criteria does the EUIPO use to assess a slogan?
Once it is clear that a slogan may become a trademark only if, beyond communicating, it can also function as a sign of origin, the practical question remains: how does the Office evaluate it concretely?
The EUIPO Common Practice seeks to answer this need. It does not introduce a rigid test or a mathematical formula. Rather, it collects and organizes the indicators that, in practice and case law, help determine when a phrase does not merely remain an advertising claim.
It must be clarified immediately: this is not a checklist. The presence of one single element does not guarantee registration, just as their absence does not automatically lead to refusal. The assessment remains overall and context-dependent, linked to the goods or services and the relevant public.
That said, Common Practice identifies recurring factors that, when present, increase the likelihood that a slogan will also be perceived as a distinctive sign rather than merely an advertising message.
In summary, a slogan has better chances when it displays at least one of these profiles:
- Multiple meanings
The phrase does not exhaust itself in one immediate reading, but leaves room for more than one plausible interpretation.
- Wordplay or double semantic level
Not for mere effect, but because it introduces a gap between what the phrase says and what it suggests, making it less interchangeable.
- Surprise or conceptual intrigue
The association of concepts is not obvious and forces the reader, even briefly, to reconstruct meaning.
- Originality or resonance
The formulation does not appear as a standard promotional phrase in that sector, but as something memorable and uniquely attributable.
- Syntax or style not purely informative
Metaphors, alliterations, paradoxes, or unusual constructions may matter only insofar as they create distance from direct, univocal communication.
The thread linking all these elements is one: the “mental effort” required from the public. There is no need to confuse or create riddles. It is enough that the phrase does not simply state, in a flat way, what the product does or why it is useful, but requires a minimal degree of interpretation or contextualization.
Conversely, when a slogan conveys a clear, immediate, self-explanatory promotional message — without interpretive residue — the Office tends to read it as an interchangeable formula typical of advertising language. And in such cases, even a well-written and communicatively effective phrase struggles to meet the minimum threshold of distinctiveness.
This “grid” is therefore an orientation tool: it does not automatically predict acceptance or refusal, but helps explain why some phrases manage to escape the category of pure claim while others do not.
How are these criteria applied in practice?
The value of the EUIPO document lies in showing, through concrete examples, how examiners reason when a slogan remains “only advertising.” The practical boundary can often be summarized as follows: does the phrase exhaust itself in the message, or does it leave a distinctive residue?
If the answer is the former, the slogan tends to be refused. If the latter, the outcome may change — even when not intuitively.
- “DREAM IT, DO IT!” (Case T-186/07)
According to the EUIPO, the phrase is immediately understood as an encouragement. It is short, correct, coherent and does not require any interpretative step: the public immediately understands what it means. Precisely for this reason, however, it exhausts itself in its motivational message and lacks that element of originality or resonance that could fix it as an indicator of origin. Even the use of the exclamation mark is interpreted as typical of advertising language, incapable of contributing to distinctiveness.
- “Take Control of Your Data” (Trademark no. 018777117)
Here the promise is straightforward: “take control of your data.” The structure is common, the meaning unambiguous, without any ambiguity or surprise. The phrase perfectly performs its function as a claim, but it does not perform a second one, that of indicating origin. For the Office, nothing remains that makes the slogan memorable as a trademark, because its informative content is immediate and interchangeable.
- “BEAUTY NEEDS TO TRAVEL”
In this case, the outcome changes because the phrase does not directly say “travel cosmetics” or “products for those who travel.” Instead, it introduces a more abstract idea, which can be read in more than one way and requires the expression to be placed in context. Distinctiveness does not arise from linguistic virtuosity, but from the fact that the consumer must make a small mental step, sufficient to ensure that the phrase does not exhaust itself in the message.
- “As Green As White Can Be” (Case R0433/2017-2)
Here the Office values the conceptual friction. The phrase, taken literally, juxtaposes two colours that do not coincide and does not provide immediate information about the product. The reader must therefore carry out a minimal but necessary interpretative step: understanding that “green” is not used as a colour, but as a reference to sustainability. At that moment, the slogan ceases to be a direct promise and becomes an expression that requires decoding.
Taken together, these examples do not say some slogans are “good” and others “bad.” They say something different, and more uncomfortable: how far can a phrase remain clear and promotional before losing all distinctive capacity?
One may disagree with these evaluations. From a branding perspective, some refused slogans seem perfectly memorable. But this is the grid through which the Office reads slogans, and it is within this grid that registration probabilities must be measured.
A final clarification is necessary: the fact that a slogan does not meet the minimum threshold of distinctiveness at filing does not mean it is permanently excluded from protection. In some cases, a phrase initially weak may acquire distinctiveness over time through use and recognition by the public: the so-called secondary meaning.
But that, indeed, is another story.
What should someone designing a slogan ask themselves?
At this point, the question is inevitable: if slogans do not easily pass the distinctiveness threshold, what should those who want protection do? The answer is not technical, but strategic: one must think of the slogan not as a mere “piece of advertising,” but as an identity element to be designed from the start with legal criteria in mind.
In this sense, it is useful to recall a contribution already dedicated by Canella Camaiora to the design of payoffs and slogans in brand identity construction. In the article “What is the correct way to build a brand payoff?” the role of these short phrases in branding strategy is expressly addressed, along with their relationship with trademarks and how to distinguish them from simple advertising claims.
That analysis highlights that:
- the payoff is the synthetic essence of the brand, designed to last over time and not tied exclusively to a single campaign;
- unlike a slogan or tagline, it has a direct strategic function on identity perception, not merely promotional;
- in designing payoffs and slogans, one must consider not only communicative strength, but also the ability to distinguish the brand in the market – a condition central also in trademark law.
Recalling these reflections helps businesses move before they reach the examiner. It is not about creating “less beautiful” phrases, but about building signs that do not immediately exhaust themselves in promotional meaning, thus increasing the chances of obtaining trademark protection.
In other words: first, design with distinctiveness in mind — then register. Not the other way around.
© Canella Camaiora S.t.A. S.r.l. - Tutti i diritti riservati.
Data di pubblicazione: 16 Febbraio 2026
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Margherita Manca
Avvocato presso lo Studio Legale Canella Camaiora, iscritta all’Ordine degli Avvocati di Milano, si occupa di diritto industriale.