How to Trademark a Phrase

How to Trademark a Phrase

Many companies possess a slogan or motto that sums up their brand in a memorable way. Nike’s “Just Do It” phrase invokes a sense of determination, while Apple’s “Think Different” is suggestive of constant innovation. A slogan can be a mission statement, or a value proposition, and serves as a quippy identification of your company.

A strong brand identity can be composed of many elements: your company name, your unique logo, and/or a catchy slogan. You will want to ensure that every component of your brand identity is protected from possible infringement.

Can you Trademark a Phrase?

A phrase or slogan can be protected just like any other trademark so long as it is used to identify and distinguish the source of goods and services. A memorable tagline or catchphrase can’t be registered unless it is being used in commerce.  Slogans and Phrases can be registered with the United States Patent and Trademark Office (USPTO). Once a slogan or phrase has been successfully registered, the owner of the trademark is entitled to numerous legal rights.

These rights include:

  • The ability to use the registered trademark symbol (®) in conjunction with the trademark, which alerts others to your trademark rights
  • Exclusive right to use the slogan or phrase for the goods and services at issue
  • Presumptive trademark rights in the event of an infringement
  • A solid basis for filing for international trademark protection

Unregistered phrases are still imparted with some degree of protection under common law trademark rights provided that they are used as a trademark. However, these rights typically only extend to the local area, and there may be nothing to stop another party from using your phrase outside of the city you are operating in.  As such, it’s highly recommended that you register your phrase with the USPTO to prevent legal trouble down the road.

Step 1: Determine Whether Your Phrase is Eligible for Registration

It’s important to note that not every phrase or slogan is eligible for federal registration. In order for a phrase to be eligible for registration, it must be distinct and not merely describe the goods or services being sold. For example, you would not be successful in trademarking the phrase “Shoe store” for a shoe store. Your registration attempt will also fail if your slogan is confusingly similar to another company’s trademarked phrase.

When picking your company slogan, try to be as memorable and distinct as possible. You should aim to keep these tips in mind when you are crafting your phrase.

  • Make it memorable: The most important characteristic your phrase should have is memorability. You want something snappy that your consumers will immediately recognize as part of your brand.
  • Zero in on what makes your company unique: M&M’s slogan “Melts in your mouth, not in your hand” focuses on a feature that makes it different from other chocolate brands. Try focusing on what separates you from your competitors.
  • Include benefits of your product: Rather than explicitly describing your product or service, focus on what your consumer stands to gain from using your product. For example, if you are selling a work out product, focus on the confidence your consumer will have strutting around in tight clothes, rather than describing the function of the product.
  • Invoke an emotional response in your consumer: Coca Cola’s approach with slogans, which include “Open Happiness” and “Enjoy life’s simple pleasures” focuses on the feeling behind the consumption of their products. Good slogans trigger an automatic positive response to the company in question.

Once you have selected a strong phrase, you will want to ensure that the slogan is available and not in current use. You can still be guilty of infringement, even if you are not aware of the existence of a conflicting trademark. For that reason, it’s crucial to conduct a trademark search before using a phrase in commerce and attempting registration.

Step 2: Conduct a Trademark Search

You can search all trademarks using the Trademark Electronic Search System (TESS) on the USPTO website. Keep in mind that a phrase does not have to be identical to your own to be flagged as confusingly similar. For the most comprehensive results, you should run several variations of the phrase in question, and use special characters and similar connotation trademarks as well.

It can be difficult to determine if a certain phrase will be deemed too similar to your own. For example, you might be unsure if “Happiness is found in unexpected places” conflicts with “Look for happiness in hidden places.” Pay attention to how closely the industries are related. If you are marketing your products to a completely different audience, you might be able to get away with a similar phrase. You can determine your rights in such a situation with the assistance of a trademark lawyer.

Unregistered trademarks still possess common law trademark rights, so your phrase search should expand outside the purview of TESS. Google searches, and searching domain names, can help alert you to phrases that might conflict with your own.

A thorough trademark search takes time, and many companies choose to outsource this task to a trademark lawyer or legal service to ensure they are casting a wide enough net in the research process.

Step 3: Submit a Trademark Application

Once you have ensured that your desired trademark phrase is up for grabs and eligible for registration, you can submit an application with the USPTO. You will need to include information about your desired phrase, and specify the class of goods or services that will be used in conjunction with the trademark. You must provide a specimen which shows that your trademark is in use. You will also need to submit a government application fee, typically $225 per class of goods and services.

The USPTO recommends that you have an attorney complete the application for you, as many trademark applications are rejected simply because the applications were completed incorrectly or had missing information. You can typically expect to hear about your application about four months after you’ve submitted it.

Step 4: Handle Office Actions and Oppositions

Once you have submitted your application, it will be processed by an examining attorney. If there is a problem with your application, you will be notified by the examining attorney and will have six months to respond. This could be a minor issue or the application could have been rejected because of its similarity to an existing trademark which is a significant issue.

In that case, it would be wise to consult a trademark attorney about the options specific to your circumstances. You may have the option of attempting to get a registered trademark canceled.  In order to successfully cancel a trademark phrase, you will likely need to prove that you were using the trademark first.

There will be some cases where you will have no choice but to alter your trademark in order to qualify for registration. You can avoid this issue by doing a trademark search before registration.

Opposition Period

Once an examining attorney has approved your application, it is published for opposition. This gives other trademark owners a 30 day window to oppose your trademark if they believe it infringes on their trademark rights. Since your application has already been approved by an attorney at this stage, you might think this part of the process is unnecessary. But trademark attorneys make mistakes like everybody else, and they can miss trademarks that are confusingly similar.

You will be notified if somebody files an opposition to your trademark, with details about what the issue is. Oppositions are overseen by the Trademark Trial and Appeal Board (TTAB). These proceedings function as streamlined litigation cases with limited discovery periods to give both sides time to strengthen their case. Absent a settlement which is typical, an opposition can stretch out for several months. If no third party comes forward with an opposition, your phrase will likely be successfully registered.

Step 5: Monitor and Renew Your Phrase Trademark

After your trademark has been successfully registered with the USPTO, it becomes your responsibility to monitor its usage as the USPTO does not enforce trademark rights. Many companies choose to employ a trademark watch service in order to catch any infringement. The quicker you respond to infringement, the easier it will be to stop unauthorized usage of your phrase.

Every Tuesday, the USPTO publishes the Official Gazette, which features all the trademarks that were approved for registration that week. You should keep an eye on the Gazette for any application that might infringe on your trademark. Additionally, setting up a Google Alert is a free and easy way to be on the lookout for trademark infringement. Both these strategies are best employed in conjunction with a trademark watch.

Allowing another company to use your phrase freely without consequence can cause irreparable damage to your company’s reputation and profits. Once you have identified an infringement, your next step will likely be to send a cease and desist letter to the other party. This alerts the other side about your trademark rights, and promises that you will take legal action if the infringement does not cease. Cease and desist letters have a better response rate when they are sent by reputable trademark attorneys, as opposed to being sent by the trademark owner.

A trademark registration lasts forever, provided you continue to use the trademark in commerce. You will, however, need to renew your registration at regular intervals. This must be done between the fifth and sixth years of registration, then again at every ten year mark after registration.  This will also require submitting fees with the renewals.

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