How To Trademark A Phrase
A powerful slogan can help make your brand unforgettable. Everyone remembers the brands associated with phrases, such as Nike’s “Just Do It” tagline or Staples’ “That Was Easy.” (The company has since retired this motto and replaced it with “Make More Happen”. Despite the change, many will still think “Staples” when they hear “That Was Easy.”)
See how powerful a good trademark can be? It achieves brand recognition and longevity. Coming up with something as catchy or memorable can help others remember your business and set it apart from your competition.
Unfortunately, with 800K+ trademarks registered each year in the U.S. alone, coming up with something completely original can be somewhat of a challenge, especially considering more than 13 million are filed each year. When you have a clever phrase, slogan, or tagline associated with your business, it is in your best interest to prevent others from using it, too. After you do come up with your attention-grabbing idea, make sure you trademark it!
Businesses put in so much work to make your brand distinctive and original. Protect your brand by hiring experienced trademark lawyers at Trestle Law to help you obtain a registered trademark and walk you through the required application process.
What is Considered a Phrase or Slogan?
The United States Patent and Trademark Office (USPTO) recognizes two different types of phrases: unitary phrases and slogans.
Unitary Phrases
In the trademark sense, a unitary phrase is one where the whole of the phrase or slogan is more than the sum of its parts. The USPTO analyzes submissions on a case-by-case basis to determine if the phrase/slogan’s “meaning and commercial impression indicate an inseparable whole.”
In many cases, the words in themselves contained in the phrase are not eligible for trademark individually, but when put together, they have a special meaning that is inherently linked to the brand. You can “test” a unitary phrase by examining whether its elements have a specific integration or are merged together in such a way that they aren’t regarded as separable.
Slogans
Slogans are words strung together that pack a powerful punch and grab the attention of consumers. Once you come up with a good slogan, you will gain a strong marketing tool that will empower you to grow your visibility. Slogans can help do all the following:
Paint an image of your brand in the minds of your audience.
Represent the essence of your company.
Make your brand more memorable to consumers.
Essentially, a good slogan can catapult your company into the limelight. It is definitely the type of intellectual property you want to protect before someone else steals it and uses it for themselves.
It is important to remember, either a unitary phrase or slogan, must be distinct and not too generic in nature to qualify for registration.
What Kind of Phrases Can You Trademark?
Your trademark is likely to be refused if it is a common part of speech. For example, earlier this year, Mariah Carey tried to trademark “Queen of Christmas” but was refused. Why? Because there were two other users of the phrase who took issue with Mariah Carey’s company, Lotion, LLC’s, pending application.
Your trademark can not merely just describe the goods or services. It has to be unique and distinguishable from common phrases or ones already trademarked. Other criteria include:
You must have a plan to use your trademark in the sale of goods or services.
Slogan must be in use as an identifier of the company, not what is being sold.
Cannot already be in use by another company or the same as one pending trademark approval
Must not sound too similar to another trademark in use or pending
The phrase (or word) cannot be one that is used in everyday speech and language.
As an example, people often refer to Harley-Davidson motorcycles as “hogs.” The company once took a small upstate New York hog farm to court for trademark infringement over the small business’s use of the word “hog.” The appeals court determined in 1999 that the motorcycle giant could not “hog” the word “hog” as it was too generic a term and used to describe big motorcycles before the company “tried to cash in on it.” Not to mention, “hog” has a secondary meaning for pigs which, as in the case of the pig farm, makes it a common-use word.
Before filing a trademark application, it is a wise strategy to speak with a knowledgeable trademark lawyer who can help you to avoid this and other kinds of common problems that can lead to a trademark denial or a messy court case.
Is it Worth It to Trademark a Phrase?
You can trademark almost any kind of phrase as long as it meets certain criteria established by the USPTO. If you want to ensure your phrase is inherently linked to your brand and business, it is definitely worth the effort to invest in a trademark registration to protect your rights to your awesome catchphrase. (Think of the t-shirts you can potentially sell!) This way, you can extend your visibility beyond your geographical location while simultaneously preventing anyone else, anywhere, from using your trademark and linking it to their business brand name.
The registration process isn’t always easy, though. In fact, trademark law can get downright messy. You’ll want to obtain legal advice throughout the process, from trademark application to checking your trademark status to obtaining trademark rights.
Trestle Law has the experience and knowledge you need to help get your great idea under trademark protection and get it entered into the USPTO database so that you have exclusive rights to it.
How To Trademark Your Phrase
If you are already using or planning to use a trademark right away, you’ll want to begin the trademark registration process immediately by filing either a use-based application or intent to use application (sometimes called 1(a) and 1(b) applications respectively).
A use-based application needs to contain proof of how you’re using the mark in commerce when you file it, whereas an intent to use application does not. Intent to use applications allow you to “reserve” your mark and permit you to being marketing without worrying someone else will steal your mark.
You will not be required to prove use in commerce until the USPTO issues a Notice of Allowance. Once they do, you will be able to submit a Statement of Use, demonstrating how you’re using the mark in commerce. If you are unable to do so within the 6 months allotted by the USPTO, you can request up to 36 months of extensions until you are able to file your Statement of Use.
Essentially, you can view this as “reserving” it for your business to use in the future. You have 36 months to file a statement of use — be sure to keep this in mind after you file.
Here are additional steps to take when pursuing a state or federal trademark approval.
1. Hire a Trademark Attorney
One of the first steps you can take to protect your company’s intellectual property ownership is to hire a knowledgeable and experienced trademark prosecution lawyer. Your company is responsible for enforcing its own trademark. In order to do that, consider hiring Trestle Law to keep an eye out for trademark infringement on your business. We’ll do the heavy lifting for you so you can focus on growing your business success.
2. Make Sure Your Trademark is Original
Your trademark application will be denied if it’s not an original idea. To determine if your trademark is already in use, start by searching The U.S. Patent and Trademark Office and the California Secretary of State.
You’ll have to ascertain if your idea is original enough or if you would be wasting time completing an application. This is especially true if there are gray areas you haven’t thoroughly examined, especially if another business is already using a similar phrase. In your search, you’ll also have to include abandoned or canceled trademark registrations.
You can also hire Trestle Law to conduct a trademark search for you on the USPTO website and its database. Our attorneys know exactly what to look for and can help you avoid serious consequences that often arise with intellectual property ownership conflicts.
For instance, if you don’t diligently perform your trademark research before you start using it, someone may file a lawsuit against you. When you work with one of our trademark lawyers, you’ll have someone who can help you do the research. This ensures you’re protected from the beginning.
3. File a Trademark Application
Once you know your idea is original and available for use, you can apply for a trademark to protect it. As you proceed, you can enter a trademark filing either at the state or federal level. Here are some important points to remember as you file your trademark application:
Make sure you choose the right class of trademark; oftentimes, you’ll need to be specific.
Don’t file for multiple classes that do not apply to your business (e.g., coffee shop when you’re selling auto parts).
Plan to describe in detail the type of products or services to which your trademark will apply.
Remember to check all fields and answer all parts of the application.
Prepare to pay both the filing fee and application fees.
Submit your trademark application.
Remember to update any changes in name, address, email address, phone number, or other pertinent information.
This is just a basic overview of how to register a trademark, but it’s actually more complex. As the application process can be confusing, USPTO recommends working with a lawyer when filing the paperwork. You can get solid legal advice and also rest assured you’re not missing any important steps or inadvertently entering incorrect or vague information on your application.
4. Monitor the Status of Your Application
Once you submit your trademark application, you’ll want to actively monitor its status. You can track your application using the Trademark Status and Document Retrieval system. If there is an issue with your application, the USPTO will let you know and include details on how to respond. This is referred to as an office action.
How Long Does It Take to Register a Trademark?
Even with an electronic trademark electronic application system, it usually takes 12 to 18 months to finish the process. The above steps in our “how to register” section are complex, and each takes a period of time, usually a few months to complete each step. The exact timeframe will vary, but generally expect it to take over a year.
Current wait times for processing can be checked to see how long it might take. It’s important to understand this is just an estimate and many delays can happen during the application and registration processes. Working with a trademark lawyer will significantly decrease the chance you’ll encounter issues that might delay your pursuit of trademark approval.
How to Ensure No One Else Uses Your Trademark
Getting your trademark approved on the federal or state level gets you over a huge hurdle. After you get the right to your trademark, you’ll need to protect it from others misusing, profiting, or abusing your trademark.
Many people don’t realize the USPTO doesn’t track intellectual property theft when it comes to trademarks. How they protect trademark owners is by making certain no identical or similar trademarks to yours are approved.
Routinely Monitor Your Trademark
It’s important to regularly monitor your trademark to ensure no one is infringing upon it and using it without authorization. If you discover another business is using your trademark, or one that looks a lot like yours, you’ll want to take action.
Send a Cease and Desist Letter
Entities that are using your trademark for their own businesses are violating trademark laws. If you find this is occurring, you have the right to send the entity a cease and desist letter. If they do not comply and continue to use your trademark, you can still take action.
File a Trademark Infringement Lawsuit
If someone or another entity refuses to stop using your approved trademark, you can file a lawsuit. A good trademark prosecution attorney will be a valuable person to have by your side.
Unfortunately, there are always “bad guys” out there with self-serving intentions. Others may use your trademark with less nefarious intentions, but it could still negatively impact your brand. In the past, there have been some epic fights over the use of trademarks.
Does My Approved Trademark Last Forever?
No. Due to the way intellectual property is structured in the U.S., you do not have the rights to your trademarks in perpetuity unless you actively maintain and use them in commerce. You’ll need to remember to file your maintenance documents, however.
To do this, you must file maintenance documents between year five and six after your initial registration. You must repeat this process between year nine and 10 and then every 10 years thereafter. You’ll want to carefully track these deadlines on your calendar. If you miss one and neglect to file the required information, you run the risk of your trademark registration being canceled.
Also, if you allow your trademark registration to lapse, it’s entirely possible for another company to grab it after your cancelation and legally use it themselves, potentially capitalizing on your brand’s reputation. If they fail to meet your standards, it could negatively affect your business. It’s best to keep your trademark paperwork up-to-date and in order so you avoid any problems. Your attorney can file the correct documents so your trademark doesn’t expire.
Protecting Your Business Has Never Been Easier
Common mistakes in trademark applications can cause months of delays, which can harm your business. Trestle Law offers services to help you manage every step of the trademark registration process. Our experienced San Diego trademark attorneys can help you file the correct paperwork, perform a trademark search, and protect you from infringement.
Want to learn more about different types of trademarks, protecting your trademarked slogan, or other details that come with trademark law? Trestle Law has vast knowledge about these and other intellectual property topics to share. We invite you to visit our website to learn more about the services we can offer your company.
Ready to file for your trademark or an intent to use a service mark? Contact our law firm today to get started on protecting your great idea and obtaining a trademarked phrase to safeguard it so it can’t be used with another business name.