How to Trademark a Phrase: Everything You Need to KnowTrademark Law ResourcesStartup Law ResourcesIntellectual PropertyHow To Register A Trademark
When you trademark a phrase you protect the words that represent your product, and protect the phrase from use when another product is mistaken for yours.7 min read
What Does It Mean To Trademark a Phrase?
A trademark helps make your product or service distinct from others. You can trademark a word, phrase, symbol, or a combination of these. When you trademark a phrase, you protect the words that represent your product or service.
Trademarking a phrase prevents someone else from using it for a product or service that could be mistaken for yours. That means a trademark can only be enforced in the business class where it is registered. By legally registering your trademark, you can you can protect it from infringement.
In the United States, the U.S. Patent and Trademark Office (USPTO) manages trademark registration. You can trademark a phrase at the local level by applying at your state trademark office. To trademark a phrase locally, you must already be using the phrase publicly. You can apply for a nationwide trademark with the USPTO. With the USPTO you can apply with the "intent to use."
Phrases eligible for trademark registration include catch phrases, taglines, slogans, and mottos. A catch phrase is an expression commonly used by a real or fictional person. This kind of phrase can be an important part of marketing your product or service. That makes it valuable and worthy of trademark protection.
Why Is It Important To Trademark a Phrase?
Registering a phrase with the USPTO helps protect it from use by other businesses.
- When you trademark a phrase with the USPTO, it is nationwide. This prevents another business from claiming local rights to use the phrase.
- If another business uses your phrase, you can file a lawsuit in federal court. You can sue for lost money, to prevent them from using the phrase in the future, or both.
- A registered trademark carries legal weight. You don't have to prove that your trademark is valid. Your opposition has to prove why the trademark should be invalid.
Reasons To Not Trademark a Phrase
- To trademark a phrase in more than one business class, you have to pay the registration fee for each class.
- A trademark costs from $225 to $400 to register. If you trademark a phrase for three classes, you will pay nearly $1,000 in fees.
- You need to be the only business in your class using your phrase. Otherwise, the USPTO will probably reject your application.
- A trademark identifies the source of a product. If your phrase describes a product or service, it won't be approved for trademark protection.
- The purpose of the phrase has to be to sell your product. Otherwise, it won't be approved for trademark protection.
- Funny or informational phrases such as "My other car is a boat" or "Are we having fun yet?" can't be trademarked.
- You need to use your trademarked phrase within a year of registration. After that, it becomes inactive.
- To re-register your phrase, you have to start from the beginning. There is no guarantee you will be able to re-register successfully.
Watching for Violations
- When you trademark a phrase, it is your legal responsibility to defend it.
- A trademark only protects consumers from confusing your business with another in the same class.
- You can't prevent someone in another business class from using your trademarked phrase. The exception is if it negatively impacts your business.
Common-Law Trademark Rights
- If you are the first to use a phrase to market your business, you already have legal "common-law rights" to the phrase.
- There is no registration or application to get common-law rights. If you are the only one using your phrase and you use it often and openly, you already have common-law rights.
Examples of Successfully Trademarked Phrases
- "Don't leave home without it" – American Express
- "Where's the beef?" – Wendy's
- "Only her hairdresser knows for sure" – Clairol
Examples of Rejected Phrases
- "Boston strong" – Rejected because it is a generic phrase and not associated with just one business.
- "Think green" – Rejected because it is a statement that does not refer to the source of a product or service.
- Select an unsuitable phrase
- It isn't related to a specific product or service.
- It includes the generic name for a product or service.
- It includes terms often used in business or the target industry.
- It only describes characteristics and features.
- It is already part of everyday speech.
- Do not start the trademark process soon enough
- The process typically takes six to eight months.
- Do not search for registered and unregistered trademarks
- Use the free search on the USPTO website to find federally registered trademarks. For common-law trademarks, you need to pay a company to complete a search.
Frequently Asked Questions
- What is the difference between a trademark, copyright, and patent?
A trademark protects words that describe the unique source of a product or service. A copyright protects original music, art, and writing. Patents protect inventions and improvements to existing inventions.
- Does a trademark expire?
A trademark is good as long as a company uses it to sell a product or service. The trademark becomes invalid if the phrase becomes a generic description for a product or service.
- What do the symbols "™" and "®" mean?
The "®" symbol means a word, phrase, or symbol is a registered trademark with the USPTO. The "™" symbol means a trademark is common-law. It is claimed but not officially registered.
- Is it possible to trademark a slogan?
Only if it refers to the source of product or service. The exception is if the slogan is found to have "secondary meaning." If the slogan includes original artwork, think about protecting the artwork with a copyright.
- What is "secondary meaning"?
A phrase that the public associates more with a product or service than with its literal meaning has "secondary meaning." Getting secondary meaning status is not easy. It usually means a big investment in marketing or five years continually using the phrase for sales purposes.
- Can a common phrase become a trademark?
If a phrase becomes more associated with a business or service than its original meaning, it may be approved for trademark protection.
- What is a "famous" trademark?
A famous trademark is well-known across all business classes. It is unique because it is legally protected in all classes. Any unapproved use of a famous trademark is prohibited because it could lower the famous trademark's value.
- Is it possible to use an un-trademarkable term in a trademarked phrase?
Yes, as long as you use a disclaimer. The disclaimer has to explain that you don't own the un-trademarkable word or phrase, except when used in your mark.
Steps To Trademark a Phrase
Trademarking a phrase is a legal process with strict deadlines. You can register a trademark in more than one state with the U.S. Patent and Trademark Office (USPTO). Examining attorneys review your application, which is then sent out for public review. The fees for trademark application are non-refundable, even if the USPTO rejects your application.
- Choose the phrase you want to trademark. Think about how hard it will be to defend your trademark. If it is similar to another phrase in your goods and service class, think about changing the phrase.
- Find out if your phrase can get a trademark:
- A trademark protects your chosen phrase, but only from another business in your class.
- Your phrase has to be original.
- Read about Trademark Basics on the USPTO website.
- Search the USPTO database:
- Decide how to file:
- If you are already using your chosen phrase, file under "use in commerce."
- If you will use it in the future, file under "intent to use." This filing has added forms and fees, and you must use your trademarked phrase within one year.
- Fill out the trademark registration forms:
- The USPTO has an online Trademark Electronic Application System (TEAS). Click Apply Online to access TEAS.
- Select the form you need.
- Write the phrase exactly as you will use it.
- Choose the class of good or service where you will use your trademarked phrase.
- Once complete, send the application electronically to the USPTO.
- Check the progress of your application with the USPTO's online Trademark Status Document Retrieval System.
- Pay non-refundable filing fees:
- You need to pay a fee to apply for a trademark. This fee is not refunded if your application is rejected.
- The amount depends on the type of application.
- Paper filing costs more than electronic filing.
- Respond to questions from the USPTO examining attorney:
- Your application has to be complete before it is delivered to a USPTO examining attorney.
- He or she makes sure the application meets all state laws and regulations and that you have paid the proper fees.
- If the examining attorney rejects your application, you will receive a letter of explanation.
- Respond to this letter within six months to go ahead with the registration process.
- If you do not respond, the USPTO will abandon your trademark registration.
- Open your trademarked phrase to the public:
- Once all rejections are overcome, the USPTO publishes your phrase in the "Official Gazette."
- This gives the public a chance to look over your proposed trademark and oppose it if they want to.
- After publication, anyone has 30 days to file a complaint.
- Overcome any public objections:
- The Trademark Trial and Appeal Board reviews any objections.
- Similar to going to federal court, each side states its case.
- Send a statement of use (SOU):
- Once you overcome any opposition (or if there was none), you will receive a notice of allowance from the USPTO.
- Next, use your phrase in your business and file a statement of use.
- You have six months to send your SOU from the time you receive the notice of allowance.
- Wait for SOU approval:
- An examining attorney reviews your SOU to make sure it meets the filing requirements.
- If there are objections, he or she will issue a letter.
- You need to respond to objections within six months.
- Once the examining attorney approves, the USPTO registers your trademark.
- File maintenance documents:
- Maintenance documents keep your registration active. It will be canceled without them.
- If this happens, you need to complete the registration process from the beginning.
If your trademark application form isn't filled out right, it may be rejected. Think about hiring a trademark lawyer before filling out the forms. UpCounsel hires only the very best attorneys and works with top companies like Google, Menlo Ventures, and Airbnb. UpCounsel can help you and your business with trademarks, copyrights, and patents.