Originally published by Shaun McParland Baldwin.
There has been a trend among policyholders to recast trademark infringement claims as infringement of slogan, in order to trigger a duty to defend under the “personal and advertising injury” liability coverage of the CGL policy. This is driven, in large part, by the intellectual property exclusion which expressly excludes coverage for trademark claims, but contains an exception for infringement, in the named insured’s “advertisement” of slogan.
Slogan is not defined in most policies. One dictionary defines it as a “distinctive cry, phrase, or motto of any party, group, manufacturer, or person; catchword or catch phrase.” Random House Unabridged Dictionary 1800 (2d ed.1993), as cited in Cincinnati Ins. Co. v. Zen Design Group, LTC., 329 F. 3d 546 (6th Cir. 2003). Another dictionary defines slogan as “(1) `a word or phrase used to express a characteristic position or stand or a goal to be achieved’ and (2) `a brief attention-getting phrase used in advertising or promotion.’” Interstate Bakeries Corp. v. OneBeacon Ins. Co., 686 F.3d 539, 546 (8th Cir.2012) (quoting MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY 1174 (11th ed.2005)). The court in Hugo Boss Fashions, Inc. v. Federal Ins. Co., 252 F. 3d 608, 620 (2nd Cir. 2001), defined the term as “phrases used to promote or advertise a house mark or product mark, in contradistinction to the house or product mark itself.”
Although in the proper context … a slogan[] can serve as a trademark … [a] slogan is certainly not by definition a trademark.” Zen Design, supra, 329 F. 3d at 556. “A slogan or any other combination of words is capable of trademark significance, if used in such a way as to identify and distinguish the seller’s goods or services from those of others.” JA Brundage Plumbing v. Massachusetts Bay Ins., 818 F. Supp. 553, 559 (WD NY 1993), citing McCarthy, Trademarks and Unfair Competition (2 Ed.1984). That being said, many courts have recognized that a slogan cannot be the house name or product name itself, but are phrases used to promote the house or product mark. Hugo Boss, supra; James River Ins. Co. v. Bodywell Nutrition, LLC, 842 F. Supp. 2d 1351 (S. D. Fla. 2012); CGS Industries, Inc. v. Charter Oak Fire Ins. Co., 720 F. 3d 71 7th Cir. 2013).
Insurers have three rebuttals to a policyholder’s attempt to characterize a trademark claim as an infringement of slogan. (These are separate and apart from the issue of whether any infringement took place in the named insured’s “advertisement”). In 2015, courts embraced each of these arguments in finding the insurer had no duty to defend:
(1) the complaint contained no allegations of slogan infringement. See Boler v. 3D International LLC, No. 2:14-cv-00658-TLN-CKD, 2015 WL 8056100 (E.D. Cal. December 4, 2015); Shanze Enterprises, Inc. v. American Cas. Co. of Reading, PA, No. 3:15-cv-0756-D, 2015 WL 8773629 (N.D. Tex. 2015). See also, Interstate Bakeries Corp. v. OneBeacon Ins. Co., 686 F. 3d 539, 546 (8th Cir. 2012);
(2) the words or phrase at issue was not used as a brief attention getting phrase or to express a characteristic or position. See, Selective Ins. Co. of America v. Smart Candle, LLC, 781 F.3d 983 (8th Cir. 2015); and
(3) the name of the company or the name of the product cannot constitute a slogan. Auto Mobility Sales, Inc. v. Praetorian Ins. Co., No. 14-cv-80094, 2015 WL 3970578 (S.D. Fla. June 30, 2015).
Policyholders have had greater success recasting trademark claims as infringement of trade dress. But that discussion is for another day.
Curated by Texas Bar Today. Follow us on Twitter @texasbartoday.
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