Key Takeaways

  • Trademarking a phrase grants exclusive rights to use it in connection with a product or service.
  • Common-law trademarks provide some protection but are limited in scope.
  • Distinctiveness is crucial for approval—generic or commonly used phrases are often rejected.
  • The application process involves a search, filing with the USPTO, and responding to office actions.
  • Costs vary but typically range from $225 to $400 per class of goods or services.
  • Maintenance is required—trademark owners must file periodic documents to keep the trademark active.
  • Legal help can be beneficial, especially for handling rejections or disputes.

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.

Understanding Common Law Trademark Rights vs. Registered Trademarks

Many businesses assume they must register a trademark to have legal protection, but common-law rights automatically apply when a phrase is used in commerce. However, common-law trademarks have limitations:

  • They only protect the phrase in the geographic area where it is actively used.
  • Enforcement requires proving that the phrase has established brand recognition.
  • Registered trademarks offer stronger nationwide protection and legal presumption of ownership.

While common-law rights offer some protection, they are not a substitute for federal registration with the USPTO.

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.

How Trademarking a Phrase Strengthens Your Brand

A registered trademark provides your business with exclusive rights to a phrase, helping in the following ways:

  • Prevents market confusion: Consumers associate your phrase with your brand.
  • Legal deterrence: Competitors are less likely to use your phrase if it's legally protected.
  • Asset value: A trademarked phrase can increase the value of your brand, potentially allowing licensing opportunities.
  • Stronger online presence: It helps in combating domain squatting and unauthorized use of your phrase online.

Reasons To Not Trademark a Phrase

Expensive Fees

  • 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.

Confusing Rules

  • 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.

Deadlines

  • 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.

Incomplete Protection

  • 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.

Alternatives to Trademarking a Phrase

If trademarking a phrase seems unnecessary or unfeasible, consider these alternatives:

  1. Copyright Protection – If the phrase is part of creative work (e.g., a book title or lyrics), it may qualify for copyright protection.
  2. Business Name Registration – Registering your business name at the state level can prevent competitors from using a similar name in your state.
  3. Domain Name Registration – Securing a domain name using your phrase ensures online presence and brand security.
  4. Contracts & Agreements – If you’re using a phrase in advertising or marketing, contracts can outline usage rights and restrictions.

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

Famous Trademark Disputes Over Phrases

Some well-known companies have fought legal battles to secure their phrase trademarks:

  • "You're Fired" (Donald Trump): Attempted trademark but was rejected for being a common phrase.
  • "Let's Get Ready to Rumble" (Michael Buffer): Successfully trademarked and licensed for millions.
  • "Taco Tuesday" (Taco Bell & Taco John's): Ongoing dispute over whether the phrase is too generic.

These cases illustrate how distinctiveness and prior use play a role in trademark approvals and rejections.

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.

Common Mistakes

The USPTO may reject your application if you:

  • 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.

How to Strengthen Your Trademark Application

To increase the chances of approval:

  1. Use the phrase in commerce first – The USPTO requires either current use or an intent-to-use application.
  2. Avoid descriptive phrases – A phrase that simply describes a product’s function (e.g., “Best Quality Shoes”) will likely be rejected.
  3. Provide evidence of distinctiveness – If the phrase has been widely used in association with your brand, submit marketing materials and proof of consumer recognition.
  4. Be prepared for office actions – The USPTO may issue refusals requiring legal arguments to overcome.
  5. Monitor and enforce your trademark – If another business uses a confusingly similar phrase, enforcement is your responsibility.

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.

  1. 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.
  2. 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.
  3. Search the USPTO database:
  4. 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.
  5. 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.
  6. 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.
  7. 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.
  8. 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.
  9. Overcome any public objections:
    • The Trademark Trial and Appeal Board reviews any objections.
    • Similar to going to federal court, each side states its case.
  10. 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.
  11. 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.
  12. Once the examining attorney approves, the USPTO registers your trademark.
  13. 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.

What Happens After Trademark Registration?

Once your trademark is registered, your work isn’t done. You must:

  1. Monitor for Infringement – Regularly check for unauthorized use of your phrase and take legal action if needed.
  2. Use the Trademark Correctly – Always use the trademark consistently and with the correct symbols (™ before registration, ® after approval).
  3. File Maintenance Documents – After five years, file a Section 8 Declaration of Use. After ten years, file a combined Section 8 and 9 to renew the trademark.
  4. Consider Licensing or Selling – A trademark can be a business asset, allowing for licensing agreements or even selling the rights.

Frequently Asked Questions

  1. How long does it take to trademark a phrase?
    The trademark process typically takes 6 to 12 months if there are no complications. However, if the USPTO issues an office action or opposition is filed, the process can take longer.
  2. Can I trademark a phrase for free?
    No, the USPTO requires application fees. However, you can establish common-law rights simply by using the phrase in commerce without formal registration.
  3. What happens if someone else is using my phrase?
    If your phrase is registered, you can send a cease-and-desist letter or file a lawsuit. If it’s not registered, you may still have common-law rights but enforcement can be more challenging.
  4. Can two businesses own the same trademarked phrase?
    Yes, if they operate in different industries. For example, Delta Airlines and Delta Faucets both have trademarks but don’t compete directly.
  5. Should I hire a trademark attorney?
    While not required, a trademark attorney can help ensure your application is correctly filed, respond to office actions, and defend against infringement.

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.