October 6, 2025
Hello Reader,
Problem (real-world, simple lesson):
A well-known food company rolled out a new slogan and fresh packaging. A major competitor didn’t just grumble—they used a Letter of Protest at the USPTO to flag legal problems with the new mark right at examination. In short: while one brand was busy printing labels and buying ads, its rival was quietly telling the USPTO, “Look closer.” That move can slow you down, raise tough questions about your slogan or design, and sometimes knock you off course before you even reach registration. If you’re curious about the backstory that inspired this email, you can read more here (one time only): https://trademarklawyermagazine.com/new-slogan-new-packaging-and-a-letter-of-protest-danone-v-chobani/
What this means for you (in plain English):
When you launch a new slogan or new packaging look, you’re doing two things:
- You’re speaking to customers.
- You’re also stepping into a legal system where competitors can raise their hand and say, “We think this is too close,” or “That wording is just advertising fluff,” or “That package design looks like ours.”
A Letter of Protest is one of the earliest and least expensive tools a rival can use. It doesn’t win a case by itself. But it puts evidence in front of the examiner fast—maybe a news piece, a website page, old ads, or earlier registrations—so the examiner can ask sharper questions or refuse your application. That can cost you time, money, and momentum right when you want your new look to shine.
The 3 biggest dangers when you roll out a new slogan or package
1) “Failure to function” for slogans.
A slogan must act like a brand, not just a cheer line. If your phrase looks like ordinary advertising (“Great taste for less!”), the USPTO may say it doesn’t tell consumers who made it. A Letter of Protest can highlight that your words appear all over the market as ad copy, not as a source name.
2) Descriptiveness (or worse, generic terms).
If your slogan describes the product (“creamy Greek yogurt”), it can be hard to register unless you’ve built acquired distinctiveness over time. A rival can send the examiner examples showing the words are common in your space—making your road to registration steeper.
3) Trade dress trouble for packaging.
Your new packaging might function as trade dress (your overall “look”). If it’s too close to a competitor’s look, or if the features are functional (like a shape that makes stacking easier), you can face refusals or pushback. A Letter of Protest can drop side-by-side images into the record to raise those issues early.
A calm, step-by-step plan (problem → solution)
Before you announce your new look
- Search the field. Don’t just search words—search visuals too. Look for colors, shapes, layout, and label “feel” in your category.
- Pressure-test the slogan. Ask: “Does this sound like a brand name, or a sales pitch?” Teach consumers to “look for” your phrase as a brand in early ads.
- Choose smart details. If your packaging includes features needed for performance (like a handle shape that makes pouring easier), know that those functional features can’t serve as protectable trade dress.
While your application is pending
- Expect a Letter of Protest. If you’re important enough to copy, you’re important enough to be challenged. That’s not a crisis; it’s normal.
- Answer the right question. If the examiner asks about descriptiveness or failure-to-function, focus your evidence on how consumers see the slogan as your brand (not just your company name). Use examples of the slogan in a brand position (pack front, label headers, hangtags), not buried in ad text.
- For packaging, show brand use. Include photos of the look on real goods in stores, consistent placement of your house mark, and any “look-for” lines that teach the market to associate the overall appearance with you.
If you’re on the other side (your rival just launched a look that worries you)
- Move fast with a Letter of Protest. It’s a quick way to hand the examiner key facts (earlier marks, side-by-sides, articles) so doubts get raised early.
- Pick the strongest lane. For slogans: failure-to-function or descriptiveness. For packaging: likelihood of confusion or functionality.
- Plan the follow-through. If your concerns remain, consider a Notice of Opposition after publication. Early action is cheaper than late clean-up.
A quick checklist you can use this week
- Slogan check: Does it read like your brand name (good), or like generic hype (risky)?
- Packaging check: Is your look distinctive (good), or built from common/functional parts (risky)?
- Evidence file: Can you show real brand use on products, labels, and web pages—not just ad blurbs?
- Watchlist: Are you monitoring your rivals’ filings so you can act within weeks (not months)?
- Plan B: If the examiner pushes back, do you have a fallback (like a stylized version or 2(f) acquired distinctiveness strategy)?
Bottom line (and why this matters on launch day)
Rolling out a new slogan and packaging is a big moment. The marketing needs to sing, and the legal needs to stick. A smart plan makes both happen. Use plain, bold brand use. Avoid purely “ad-speak” slogans. Build a record that teaches shoppers that this slogan and this look mean you. And remember: your competitor may raise a hand with a Letter of Protest—so be ready.
Keep Your Brand Safe and Protected,
J.J. Lee and the Trademark Lawyer Law Firm Team!
P.S. If you’re about to launch—or your rival just did—contact us before you hit “print.” We’ll review your slogan and packaging, flag Letter-of-Protest risks, and map a clear filing and evidence plan that helps your brand land strong and stay protected.