Catchphrases are everywhere. Big brands and famous celebrities use them to encourage name recall and sell everything from music to makeup sponges.
How are the likes of Nike (‘Just do it.’), Taylor Swift (“This sick beat.”), and Paris Hilton (“That’s hot!.”) able to do it?
They all went through the process of trademarking a phrase.
Benefits of Trademarking a Phrase
Apart from the obvious commercial advantages of trademarking a phrase, why should you do it?
When you register a phrase with the United States Trademark and Patent Office (USPTO), it gives you sole ownership. This protects it from being used by other businesses.
Another benefit of trademarking a phrase with the USPTO is the fact that it takes effect nationwide. This is a good thing because it prevents another business from claiming local rights to use the phrase.
Keep in mind that a registered trademark carries legal weight. If another business uses your phrase, you can file a lawsuit in federal court, even when that business is operating in a different state. You can sue for lost money, to prevent them from using the phrase now or at any point in the future
The burden of proof for invalidating your trademark phrased lies with the opposition.
When to Trademark a Phrase
Now, it’s not just big brands and famous celebrities who can trademark phrases. Ordinary people just like you and me can do it too. Provided that our reasons for doing so meet the criteria below.
First, you need to demonstrate an intent to use the phrase in commerce. What does this mean? The trademark phrased must be used to sell specific products and/or services. You can’t just trademark a phrase just because you like it and don’t want anyone else to use it.
Second, when filing your trademark application, you’re required to identify the types of products or services that you want to use your trademarked phrase on.
To be eligible for trademark protection, picking a phrase that describes those goods or services won’t be enough. You need to come up with one that’s unique but will relate well to whatever it is you plan to sell.
For example, Paris Hilton was granted trademarks to use “that’s hot” in connection with clothing, portable electronics, and alcoholic beverages. However, she may have had trouble trademarking the phrase for fresh coffee or portable heaters.
Finally, know that you aren’t allowed to trademark a phrase or word that’s deceptively similar to a phrase or word that’s already been trademarked for the same type of products or services that you intend.
Step 1: Choose an Original and Distinct Phrase
As mentioned earlier, it is critically important that your trademark is sufficiently distinct to the goods/services that you intend to list in your trademark application.
Say you wanted to trademark the phrase “Frozen Ice Cream” and you indeed plan to sell frozen yogurt or sorbets, the mark would not be accepted.
Note that descriptions/words for the goods/services listed in the application are not eligible for registration.
A more appropriate phrase that would be eligible for registration in the ice cream example may be something to the effect of, “The thing that makes you grin.”
Step 2: Conduct a Trademark Phrase Search
Before even attempting to trademark a phrase, you need to make sure that no one else has trademarked a similar phrase for the same type of products or services. Pull up your favorite browser and type in USPTO.gov. Add your phrase of choice into the Trademark Electronic Search System (TESS). The system checks for phrases that are identical or similar to the one you want to trademark.
Step 3: Fill Out the Trademark Phrase Application
There are two ways you can apply. You can do it online using the USPTO’s Trademark Electronic Application System. Or you can do it the old-fashioned way by filling out the form and mail a paper application.
Either way, be ready to submit these requirements along with your application:
- The owner of the mark and the name and address for correspondence
- Type of registration — standard character format or in special character format. Standard character format protects your phrase no matter what color, font, or style you display it in. A special character format protects only a particular font or style.
- The type of products or services your mark is used for.
- Specify if filing based on use in commerce or intent to use in commerce. “Use in commerce” means you’re already using the mark now. If you plan to use it within the next few years, file based on “intent to use.”
- A picture and specimen of your phrase. If you are registering your phrase as a special character mark, make sure to have a picture or drawing that shows what your phrase looks like. A specimen should also be provided for your phrase. The specimen is a picture of your phrase being used on your products or services. For goods, your specimen might be a product or package label. On the other hand, services might require a brochure or sign.
Step 4: Submit the application and Pay the Trademark Application Fee
Expect to pay USPTO charges of $225-$325 per class of goods or services registered electronically, and $375 per class of goods and services registered via paper application.
Know that the fee is non-refundable. You won’t get your money back if your trademark registration is denied.
Step 5: Respond Promptly to Office Actions or Other USPTO Correspondence
Your trademark application will be assigned to an examining attorney for review. If the attorney identifies problems with your application, you may receive an Office Action.
The Office Action will explain the problem and give you a deadline to resolve it. It’s important to respond within the deadline to avoid having your application denied.
Step 6: Wait for Your Trademark Registration to be Approved
It will take several months to a year for a trademark application to be approved. If there are problems or objections, the process may take longer. While you’re waiting, you can use the symbol “TM” or “SM” with your trademark or service mark.
Step 7: Maintain Your Trademark
Once your trademark is registered, you can then use the registered trademark symbol, ®. Remember, you will need to periodically file maintenance documents with the USPTO to keep your trademark in force.