Trademarking a Phrase: Why It Matters
As a brief recap, a trademark is a source-identifier which may be registered in the United States Patent and Trademark Office (USPTO). When a consumer sees a trademark tethered to a particular good/service, the consumer immediately imbues the good/service with a set of value assumptions based on the reputation of the trademark. Consider for the moment the NIKE slogan, JUST DO IT. If a person holds a favorable view of the Nike Corporation, merely seeing this slogan printed on a T-Shirt will likely be enough for the individual to think positive thoughts about the T-shirt. The T-Shirt is made by Nike – it must be cool. Conversely, if a person holds negative thoughts about the Nike Corporation, merely seeing the Phrase will illicit negative feelings about the T-Shirt. The T-Shirt is Made by Nike – it’s probably made from low-quality materials. The relevant point here is that Nike’s Trademarked Phrase, Just Do It, is doing all of the selling. The trademark is the pitch. Trademark Registration can be easy with a Top Trademark Lawyer.
Key Trademark Rules
Trademark Registration: Essential Points
1. Trademarked Phrase cannot already be registered by another applicant for a similar product or service2. Trademarked Phrase cannot simply describe the nature of the product or service3. Trademarked Phrase must actually be used in conjunction with the sale of a product or service
Trademark A Phrase: Digging in Deeper
Should I Trademark My Phrase?
The answer, of course, is that it depends, but if your branding and marketing strategy relies heavily on a phrase, like NIKE’s Just Do IT, the answer is a resounding Yes. In fact, it would be insane not to trademark your phrase and slogan.
Limits of Protection of Trademarked Slogan
Your Trademarked Phrase is only entitled to protection against infringement from a sufficiently similar phrase, operating in conjunction with sufficiently similar good or service.
Is My Phrase Protected If I Don’t Register it with the USPTO Under Common Law?
Yes, but only in the immediate geographical location under which your phrase/slogan is being used in commerce and ONLY as long as you are the first actor and the phrase/slogan is not already in use and/or registered in the USPTO.
Will Trademarked Phrase be Rejected by the USPTO?
When does the USPTO deny applications?
Your desired phrase/slogan may be rejected for any of the following reasons:
- The prospective trademark is not actually being used in conjunction with the sale of a good or service
- The prospective trademark includes is excessively generic or descriptive, given the nature of your industry
- The prospective trademark is considered everyday speech or veernacular
- The USPTO trademark attorney believes your desired mark conflicts or is excessively similar to an existing mark so as to cause “consumer confusion.”
- Other reasons include: The phrae is disparaging or offensive; a foreign term that translates to a descriptive or generic term; the phrase intrudes upon another individual’s likeness
Need To Trademark a Phrase in a Hurry? Get Started Now
Unfortunately, there is no set or exact time frame that a trademark applicant can consistently rely on. Typically, the applicant will hear back, one way or another, from the USPTO within 4-7 months of submitting the trademark to the USPTO for review.
How to Trademark a Phrase: Step By Step
Trademarking a Phrase is Easy with a Top Trademark Lawyer
Choose an Original Phrase
- Verify that your phrase is not similar to others in your business class
Search the USPTO Database for Your Phrase
- If you find a phrase similar to yours in your business class, hire a trademark attorney for further counsel.
Choose Which Category/Class to File Under
- “use in common” for phrases that are already in use
- “intent to use” for phrases you will use in the future, i.e. within the next year (Note: this category requires additional forms and fees)
Access the Trademark Electronic Application System (TEAS) online
- Select Proper Form
- White the phrase exactly as you want it to appear
- Choose the appropriate business class
- Pay Government filing fees (will differ according to number of classes)
- Submit the Trademark Application for your Phrase
- Check status of application on Trademark Status Document Retrieval System
- Provide response/s to any USPTO Office Action
- If Intent to Use application is filed, submit Statement of Use (SOU) within 6 months of receiving Notice of Allowance (NOA)
- File maintenance documents to ensure active registration