How to Trademark a Phrase

As a business owner, you may wish to establish your product or service as distinct from the competition. When your offerings are unique, customers are more likely to land on your page or store and make a purchase. What’s the best way to make your goods or services distinct? Creative branding and strategic marketing are definitely up there. Trademarking a phrase, however, is one of the more powerful legal ways to achieve that distinction. Fortunately, what you get when you trademark a word, phrase, or symbol is protection from infringement. 

Everyone knows what it is like to be a customer. It’s often chaotic, confusing, and overwhelming! There are so many choices on the marketplace, no matter the product or service customers are seeking to purchase. Take a look at the ketchup section in a supermarket aisle – who ever thought there could be so many different kinds! That being said, on the business owner side, you’ll want to set your product or service apart from the rest. Trademarking a phrase can give you that necessary edge and inform consumers, while also engaging them so that they return to make a purchase again and again. 

Slogans, Catch Phrases, Taglines, Mottos

Slogans, catch phrases, taglines, mottos – these are all available for trademark registration. In terms of marketing, something like a catch phrase can become synonymous with a brand. The catchier, the more memorable, the better! Consider “Just Do It” for Nike, “America Runs on Dunkin” for the major coffee chain, and “Red Bull Gives You Wings” for the energy drink. These are some of the most impactful, trademarked catch phrases ever invented. When consumers think of the product, they hear the phrase, and vice versa. Isn’t that incredible! We believe so, indeed. 

The undeniable value of your phrase is why trademarking it makes so much sense. For sure, coming up with the idea of a phrase seems like the hardest part. It probably is! But after that, if you don’t trademark that property, someone else could swoop in and take it, undermining your efforts and hurting your business. That would be a tragedy! 

Your Phrase Can Be Trademarked Across the Country

Trademarking a phrase with the United States Patent and Trademark Office (USPTO) gives you the best protection. If another business wants to claim they have the right to use your phrase, guess what, they can’t! The trademark registration also extends throughout the entire country. So, if your business is based in New York and a competitor in California tries to use your motto, you can sue them. With registration, business owners can file a federal lawsuit and seek to recover any lost money. Not only that, you can ensure that infringers won’t be able to use the phrase at any point in the future.

The cool thing, too, is that as a trademark holder, you won’t have to prove the validity of your trademark. In the case of infringement, the one who is opposing you must prove why your trademark is invalid. This gives you, the trademark holder, an obvious advantage! 

If you’d like to trademark a phrase within your own state, you can do that as well! It is required, though, that you are already using the phrase publicly. 

As you may know already, trademarks can only be applied to goods or services in a particular class. So, if you wish to trademark your phrase in more than one class, the cost will vary depending on how many classes you choose. The enforcement of your trademark can only be accomplished in the business class in which it is registered. In this way, there are some limitations. 

Understanding the Rules for Trademarking Your Phrase

A discussion of trademarks and intellectual property protection would not be complete without some confusion. This topic is no different! Some of the USPTO rules regarding trademarking a phrase can throw you through a loop. Such as, you are required to be the only business in a particular class that is using the phrase in question. You are also prohibited from using a phrase that describes your product or service. Your phrase must serve the purpose of selling your goods or services, too. Any phrase that is information-only or humorous is probably not eligible for trademark, either. So, if you want to trademark phrases like “My mother-in-law is not a nice lady” or “How tall are you?” you won’t be able to. Your trademark has to refer to the source of your goods or service. 

Are there any other rules or regulations for trademarking a phrase? You bet there are! Among them, business owners need to use the phrase within a year of their registration. Once a year passes, the phrase is rendered inactive. To register the phrase again, you’ll have to start all over and there’s no guarantee it will be approved.

Trademark Holders Have to Defend Their Phrase

Once your phrase is trademarked, the holder is responsible for defending that phrase. Neither the USPTO or any other entity defends the phrase for you. The protection you’ll get with trademark registration is not totally comprehensive, either. As we noted, the trademark protects customers from experiencing confusion only within the same business class. If another business in a different class uses your trademarked phrase, there’s nothing you can do. They are legally entitled to do so, unless that usage is somehow damaging your business. 

Another neat aspect of intellectual property law is what’s known as “common-law rights.” Perhaps you are the first business ever to use a certain phrase for marketing purposes. If that’s true, “common-law rights” offer you a base level of protection. The “™” symbol represents common-law protection, whereas the “®” symbol means the phrase, word, or symbol is a federally registered trademark. 

How to Avoid Getting Rejected by the USPTO

The main objective when applying for a trademark is to avoid getting rejected by the USPTO. Which happens quite often! Especially when folks attempt to register their trademark without the assistance of an intellectual property attorney. 

What are some commonly made mistakes when trademarking a phrase? There are many! Generally speaking, an application will be rejected if you choose a phrase that is considered unsuitable. For example, you could be rejected if the phrase is something used in everyday speech. If it has terms frequently used in the relevant industry or business. Or, if the phrase is descriptive of the product or service’s characteristics or features. If it has a generic name for the product or service. Or, if the phrase does not pertain to a specific good or service. Interestingly, if you want to trademark a phrase that has an un-trademarkable term in it, you can as long as you have a disclaimer that says you don’t own the phrase or word, except when it is used in the mark. 

Another common issue is that those applying for the trademark don’t do their research! You ought to search the USPTO database of existing trademarks as thoroughly as possible so that you aren’t looking to register something already taken.  

Trademarking Your Slogan and Secondary Meaning

Lots of business owners want to trademark their slogan. You can do this! But, the slogan has to refer to the source of the good or service. There is a caveat, though. Which is, if your slogan has what’s called “secondary meaning.” What now? Secondary meaning refers to when the consuming public associates the phrase with your product, more than with the actual or literal meaning of the phrase. If consumers identify your trademark with your product over time, you can get secondary meaning status. 

An Outline of the Trademark Registration Process

To trademark a phrase, you will have to start and go through with a somewhat rigorous legal process. Below, we will outline the process so that you can better understand what trademarking a phrase involves. 

• Select your phrase. Consider how viable it would be to defend the trademark, if approved. If the phrase you come up with is very similar to one already in use in the same class, you may want to choose another phrase. 
• Be reasonably sure the phrase can be trademarked. In this sense, originality goes a very long way. The more original, the better. 
• Search, search, search! The USPTO Trademark Electronic Search System (TESS) is there for this exact purpose. 
• Determine how you will file the phrase. Those already using a phrase should go with “use in commerce.” Those who plan on using the phrase down the line should select “intent to use.” With “intent to use,” you’ll have to actually use the trademarked phrase on the marketplace within a year of registration. 
• Complete the trademark registration forms. The USPTO has an online system called the Trademark Electronic Application System (TEAS). When filling out the TEAS forms, be sure to write the phrase just as it is used or how you will use it. Select the appropriate class of goods or services. Following submission, you can check on the application’s status with the Trademark Status Document Retrieval System.
• Pay the fees. All of the fees you’ll pay to apply for a trademark are non-refundable, even if the application is rejected. 

The Registration Process Continued…

• Respond to the examining attorney. The examining attorney will carefully scrutinize your application and request information as they see fit. If they reject the application, they will let you know with a letter, which you can respond to in order to press on with the registration process. If you don’t respond to the examining attorney, your application will be abandoned by the USPTO. 
• Address public objections. After you successfully register your phrase, the USPTO will publish it in the “Official Gazette.” The public then has the opportunity to oppose the mark. If there is any opposition, you’ll have to overcome it by way of the Trademark Trial and Appeal Board. 
• Submit your statement of use (SOU). After you receive the notice of allowance from the USPTO, you’ll have to use the phrase and file a statement of use within six months. If the examining attorney finds that the SOU doesn’t meet filing requirements, they will let you know, and you’ll have six months to respond. 
• File the maintenance documents. With USPTO trademark approval in hand, you’ll then have to file these documents to maintain an active registration. 

If you have any questions about trademarking a phrase or would like to discuss how to best proceed with registration, contact us today! We offer a free consultation. Our team is looking forward to working with you to protect your intellectual property!

 Up next we will be discussing Common Law Trademark Rights.