Most businesses these days use a distinctive phrase or slogan associated with their goods or services to help create and improve their brand recognition. Customers often think about the company’s name or its products when they hear the phrase. Trademarking a phrase or slogan is a great way to protect your intellectual property and to have exclusive rights over your company’s trademark. Adding a TM symbol to the phrase or slogan, as well as registering it with the U.S. Patent and Trademark Office (USPTO) will also provide additional protection for you and your company from any possible infringement. So if you think your catchphrase has the potential to earn you economic benefits, you might want to trademark it.
Here you’ll find out what type of trademark protection is available for phrases, including slogans, taglines, catchphrases, and mottos as you continue reading.
Protecting a Phrase/Slogan
There are a couple of ways by which you can protect your phrase. The simplest way of protecting your phrase is by using it in commerce. This way, the common law protects your mark. You do not need to register for a common law trademark protection, but it comes with a drawback. If someone sues you for infringement, it becomes difficult to enforce your rights in court as hard evidence is required that shows you were the first to use the mark openly and frequently in marketing your goods or services.
A better way to protect your phrase is to register it with the state government. However, this also has the drawback in that it only protects your mark in that particular state.
The best way to register your phrase or slogan is where you get nationwide protection. The United States Patent and Trademark Office does that to ensure complete protection across all states. The procedure of registering your mark is similar regardless of whether it’s a name, a logo, or a phrase/slogan.
USPTO Trademark Application Process
The USPTO’s official website from where the application can be processed, giving individuals a way to register their trademark easily.
The way you can go about the process is to perform a trademark search of the phrase you’re looking to register. You can conduct a trademark search by simply going to the USPTO’s Trademark Electronic Search System (TESS) and checking if the phrase you want to register is already there or not. Once you get cleared of that, you can move on to the next step, complete the online application using USPTO’s Trademark Electronic Application System (TEAS) and submit it. You are required to pay a non-refundable fee to the USPTO at the time of filing.
The next step is to wait for your application to be examined by an attorney at the trademark office. The outcome can either be an approval of the trademark, rejection of the trademark (non-final Office action), or the examining attorney asking for any missing information. If the examining attorney finds any problem with your trademark application, they issue an Office action that requires a response from the applicant within six months. Office actions cause delays in registration until all the issues in the application are resolved.
Once the examining attorney is satisfied with your application, you either receive a Notice of Allowance or the registration certificate. A Notice of Allowance is issued if the application was filed on an intent to use basis. On the other hand, the registration certificate is granted to the trademark owner if the application was filed on an in-use basis.
A Notice of Allowance means your application is very close to registration. Then, you only have to submit a Statement of Use (SOU) as a declaration that you are using the mark in connection with the goods and/or services your business has to offer. The Statement of Use consists of a specimen of your trademark used in interstate commerce. So, for example, if you are using the mark to sell clothes, you may submit an image of your brand’s clothing tag.
If no refusals or additional requirements are identified, the examining attorney will approve the mark for publication in the Official Gazette (OG), a weekly online magazine. There is a thirty-day period for third parties to file an opposition against your trademark registration after the OG is published. If no one files a legitimate objection within the time, the mark is registered.
Rules to Trademark a Phrase/Slogan by the USPTO
Before you file your trademark application, you should be aware of the requirements set forth by the USPTO to avoid your trademark from being rejected and losing your non-refundable. To help you with that, we’ve gathered up the most important rules so that you may have a better idea.
- Not all words or phrases can be trademarked unless utilized for commercial purposes. For example, a phrase cannot be trademarked just because someone likes it and doesn’t want others to use it.
- Many people are unaware that a registered phrase is only protected against infringement in the same class or category of goods or services.
- Your company must use the phrase that you register to identify itself and the products or services associated with it. This particular aspect is debatable as some phrases approved in the past seem to disregard this.
- The phrase must be distinctive and not generic or just descriptive, meaning that the phrase should not be generic or common in the applicant’s type of business. For example, “Apple” can be trademarked by a business that makes electronic items but not by a company that sells apples.
- The phrase should not cause a likelihood of confusion among consumers.
- The phrase that you register must have something unique about it, i.e., it should not include words that are commonly used in the applicant’s type of business.
- The phrase must not have any derogatory term because that’s a flat-out rejection case right there. The USPTO is very adamant about that fact, so make sure you aren’t doing that.
- The phrase must not be something that people say daily.
If you believe your phrase or slogan will be a game-changer for your business, you may be better off protecting it with a federal trademark registration. At Trademark Republic, we can help you with the trademark search and registration from start to finish.
