Quiz: Are ‘Taebaek Mountain Range,’ ‘Think Different,’ and ‘Big Mac’ Trademarks?
The answer is no. Surprisingly, items such as business names, publication titles, advertising slogans, and menu names are not trademarks.
Even Big Mac is not a trademark? That’s right. In 2019, the European Union Intellectual Property Office (EUIPO) ruled that Big Mac was not used as a trademark but merely as a menu name. This decision was made in a trademark cancellation case filed by a startup fast-food chain called Supermac’s, which argued that McDonald’s had not used the Big Mac trademark in commerce.
There may be room for debate about whether Big Mac, a globally recognized name, is really just a menu item. However, what we need to remember here is that menu names are not trademarks.
What Is a Trademark?
A trademark is a source-identifying sign that distinguishes your goods from those of others. In simpler terms, it’s a sign that tells consumers who made the product. A menu name describes the contents of a dish, not who provides it, and therefore, it is not a trademark.
- A business name is a name used by a merchant to identify their business operations, similar to an alias or stage name. It is not a trademark.
- A publication title refers to the title of a book, which describes or hints at its contents. It is not a source indicator and therefore not a trademark. A publisher’s or author’s name might serve as a source indicator instead.
- Advertising copy typically consists of phrases that highlight a product’s excellence or concept. While it may sometimes serve a source-identifying function due to its popularity, this is rare, and advertising copy is generally not considered a trademark.
- Slogans, phrases, and catchphrases are also usually deemed to lack distinctiveness as trademarks.
Examples include:
- Our Green Land
- Tankism
- Life’s Good
- Think Different
- Just Do It
Most brands and businesses use slogans and catchphrases, but these are not considered trademarks and do not receive protection.
Additionally, the Korean Supreme Court has ruled that advertising slogans are too short to qualify for copyright protection. Therefore, slogans are protected neither under trademark law nor copyright law.
Still, Try to Register It
Even though slogans, names, and other items may not be trademarks, that doesn’t mean they cannot be registered. Registration might come with challenges in enforcing rights, but it is still worth pursuing.
Trademark examiners cannot easily determine whether a submitted sign is a menu name, store name, or publication title. If the sign does not describe the product and there are no similar prior trademarks, the examiner is obliged to approve registration unless other grounds for refusal exist under trademark law.
Therefore, even if the mark in question is not inherently a trademark, such as a business name, publication title, or menu name, it is beneficial to register it through any possible means.
Limitations and Considerations
Even after registration, enforcing rights against third parties may be difficult. This is because trademark registration, use, and infringement are separate matters.
However, having a registered trademark is still better than having none. Legal disputes over whether a sign qualifies as a trademark can only be resolved through court rulings.
Although a business name may not be considered a trademark, it often functions as one. In modern society, distinguishing between a business name and a trademark is increasingly difficult—especially in the service sector, where they often overlap.
For example, is the name of a popular restaurant a business name or a brand? Consider Choma Jjampong in Hongdae, a famous local restaurant. Initially, it was a single small store, but it became so popular that it opened additional locations and even launched a Peacock Choma Jjampong product in partnership with E-Mart. Consumers now recognize Hongdae Choma Jjampong as a brand rather than just a restaurant name.
Determining when a business name becomes a brand is challenging. How can you pinpoint when it stopped being just a business name and became a trademark?
The same applies to publication titles and menu names. It’s difficult to draw a clear line between what functions as a trademark and what does not. Often, this requires legal proceedings for a final determination.
Practical Advice: Register When Possible
If a name—whether it’s a business name, publication title, or menu name—can be registered, it is better to secure that registration.
However, slogans and advertising copy face stricter scrutiny under trademark examination guidelines, which explicitly classify them as non-registrable marks.
One strategy is to follow the example of Delicious Milk GT. You can combine the slogan with a logo or other distinctive text to increase the likelihood of registration. Alternatively, you can modify the slogan to avoid forming a complete sentence. For instance, a T-shirt brand once used the slogan We Are Not Fat. When they removed the word are and applied for the trademark We Not Fat, the application was approved.
Build a Wide Fence of Protection
Rather than registering only the trademarks you intend to use, register all words (brands) you want to monopolize. How you use those words doesn’t matter. If there is a word you want exclusive rights over, apply for its registration.
The purpose of trademark registration is not to obtain permission to use a mark but to prevent others from copying it. By building a protective fence, you block competitors from entering your territory. Therefore, it’s wise to register trademarks across all areas where imitation might pose a risk. When it comes to trademarks, adopting an aggressive registration strategy can be advantageous.