How to trademark a phrase

Using a distinctive phrase connected with your business can help create and improve your company's brand recognition. To prevent other companies from using your phrase, you need to know how to trademark a phrase.

Find out what kind of trademark protection is available for phrases, including catchphrases, slogans, taglines, and mottos.

Protecting a trademark

Trademarks can be protected in several ways. There is what's called "common law" trademark protection. This comes about simply by using the trademark openly in your business. The drawback is that it can be difficult to enforce your rights in court. You'll need to prove that you were the first to use the trademark and that you have used it openly and frequently in marketing your goods or services.

The best way to protect a trademark is to register it. This can sometimes be done by registering with an agency of a state government. Such registration must comply with the particular requirements that vary from state to state. The drawback is that state registration only protects the mark in that state.

Nationwide protection is offered by registering the phrase with the United States Patent and Trademark Office (USPTO). Regardless of whether the trademark is for a phrase, logo, or something else, the same procedure is involved in registering a trademark.

Federal trademark rules

The federal rules regarding trademark registration of a phrase are confusing. Not every phrase can be trademarked, not everyone can trademark a phrase, and registration does not provide complete protection.

Numerous rules may result in a trademark application being rejected. These include:

• Only a phrase that is used for a commercial purpose may be trademarked. You can't trademark a phrase just because you like it and don't want anyone else to use it. You must be using the phrase or intending to use the phrase in connection with the sale of goods or services.
• Your trademarked phrase is only protected against use by others in the same class of business.
• The trademark must be used to identify your company as the source of the goods or services. Your application may be rejected if it's determined that the phrase only describes the goods or services, rather than the company that is their source. However, some phrases that have been approved seem to ignore this.
• The phrase may not be the same as a phrase that has already been registered or has a pending application.
• The phrase may not be likely to be confused with a phrase that has already been registered or has a pending application and relates to a similar type of goods or services.
• The phrase must be distinctive and not generic or just descriptive. To complicate things, a phrase that is distinctive when used in relation to one type of business may be generic in relation to another type of business. For example, the word "Apple" can be trademarked by a company that makes computers, but not by a company that sells apples.
• The phrase can't use terms commonly used in business or in the applicant's type of business.
• The phrase can't be a part of everyday speech. For example, phrases like "I'm just saying," "as a matter of fact," or "on the other hand" would probably be rejected. This concept can be confusing when you learn that the phrase "that's hot" was approved for use with certain products.

When you compare phrases that have been accepted for registration with phrases that have been rejected, it can be difficult to understand the reasoning for acceptance or rejection.

Federal trademark application process

The Federal trademark phrase application procedure is fairly simple and can be done online through the USPTO website.

The first step is to conduct a trademark phrase search to be sure that the phrase you intend to use is not already trademarked. This can be done online through the USPTO's Trademark Electronic Search System (TESS).

The next step is to complete and file a trademark application. This can be done online using the USPTO's Trademark Electronic Application System (TEAS). For some, a major disadvantage to federal trademark registration is the application fee, which is non-refundable even if your application is rejected.

Your next step is to wait. Applications for any type of trademark are reviewed by an attorney with the USPTO. This will result in either approval of the trademark, rejection of the trademark, or a letter from the attorney asking for more information.

If you have a good phrase for marketing your goods or services, you may be wise to protect it with federal registration. This is especially true if you plan to develop a large business. But for many small, local businesses, the advantages of registration need to be weighed against the cost of registration.