–Ben Kwan, Attorney

“Yes!” I exclaimed as I scrolled through my Facebook feed two days ago, “Perfect timing! I’ll get to follow-up on Brent Lorentz’s ‘You’ve gotta be shipping me!!’ DuetsBlog post from earlier this year.

Consider it an early Christmas gift from the cheeky folks at Kmart and their advertising partner, Joe Boxer.  Surely you’ve seen it by now.  If not, here goes (possibly NSFW if you work at, say, the Parents Television Council, who told the HuffingtonPost the commercial is likely to create “a lot of awkward moments for parents.”):

But then I got to thinking, do I really want to revisit the topic of Brent’s DuetsBlog post, which would require me to opine on the vulgarity of the dinging and donging you just enjoyed in that chirpy rendition of Jingle Bells?

Luckily I don’t have to. Instead, I get to highlight another legal issue I discovered, one highlighted by the striking similarity between Kmart’s viral “Show Your Joe” campaign of this week and the Jockey brand not-as-viral “Show You’re Jockey” campaign of earlier this year. Spoiler alert, this likelihood of confusion is most likely a legal non-starter.

A photograph from the “Show You’re Jockey” ad campaign.

First of all, what’s with both of these companies using singular objects in place of something we all know is plural (i.e., pants, skivvies, breeches, shorts)? Oh yeah, because this is advertising, and it’s more of a slogan to be suggestive. Which brings me to the substance of all this tomfoolery: Jockey v. Joe Boxer isn’t likely to show up in a courtroom near you anytime soon, at least on Trademark grounds.  It takes a lot to create a slogan that can become a protectable mark, mostly because slogans employ common words and phrases that aren’t inherently distinctive enough.

To qualify as a protectable mark, a slogan like “Show Your Joe” or “Show You’re Jockey” would need to acquire a secondary meaning, or, enough recognition that when rattled-off, the brand linked to the slogan immediately comes to mind.

Professor Lisa P. Ramsey of the University of San Diego School of Law has written a great law review article on intellectual property rights and advertising slogans.  She argues that, despite the increasing number of trademarks in slogans granted in the United States since the 1960s (you’ve seen them, we’ve written about them, think “Just Do It”) slogans should not be afforded trademark protection under the Lanham Act.  Ramsey says that protecting slogans legally limits the choices of advertisers, whose main goal in crafting a slogan is to use few words and convey a simple, lasting message.  Ultimately, protecting slogans and taglines limits competition.  If you’d like to read more, a free copy of Ramsey’s article is available online.

Tell us what you think.  I just hope “Show Your Joe” doesn’t someday acquire secondary meaning and end up in front of a judge who’s secretly self-conscious over his or her robe, always wondering whether we’re wondering . . . but I digress.