In the USA, a memorable phrase, slogan, or tagline can become just as iconic and valuable as a brand name or logo. From "Just Do It" to "The Happiest Place on Earth," these short expressions can capture the essence of a brand and resonate deeply with consumers. Learning how to trademark a phrase is crucial for US businesses looking to protect these powerful linguistic assets and prevent competitors from leveraging your unique messaging.
Not all phrases can be trademarked. For a phrase to be eligible for trademark registration with the United States Patent and Trademark Office (USPTO), it must function as a source indicator, meaning consumers must perceive it as identifying the source of your goods or services, rather than just descriptive information or a common saying.
Phrases typically fall into categories of distinctiveness:
Fanciful/Arbitrary: Strongest (e.g., invented words or common words used in an unrelated context).
Suggestive: Strong (e.g., "Coppertone" for suntan lotion).
Descriptive: Weak, and often only registrable with "acquired distinctiveness" (secondary meaning) through extensive use.
Generic: Not registrable (e.g., "Best Coffee" for a coffee shop).
The more distinctive your phrase, the easier it will be to trademark.
Focus on creating a phrase that is unique and immediately links back to your brand, rather than a generic description of your products or services.
Avoid Common Sayings: Phrases that are merely common sayings or proverbs are generally not registrable.
Consider Impact: Think about how the phrase functions in your marketing , does it identify your specific offering?
Before applying, it's vital to search for existing phrases that are identical or confusingly similar.
USPTO TESS Database: Use the USPTO's Trademark Electronic Search System (TESS) to search for similar phrases, considering variations in spelling, hyphenation, and context of goods/services.
Phonetic Similarities: Look for phrases that sound similar even if spelled differently.
Common Law Search: Extend your search to state databases, business registries, and the internet to uncover unregistered (common law) uses that could pose a conflict.
Expert Recommendation: Due to the nuances of "likelihood of confusion" for phrases, a comprehensive search conducted or advised by a trademark attorney is highly recommended to assess registrability.
You will need to provide a specimen showing how your phrase is actually used in commerce with your goods or services.
In Use: The specimen must demonstrate actual commercial use of the phrase as a trademark. This could be on product packaging, a website displaying your services, advertising materials, or promotional items.
Standard Character Mark: For a phrase, you typically apply for a "standard character mark." This protects the words themselves, regardless of font, color, or design. This offers broad protection for the phrase's textual element.
File your application electronically via the USPTO's Trademark Electronic Application System (TEAS).
Applicant Information: Provide accurate details of the individual or business entity owning the phrase.
Goods/Services: Clearly define the specific goods or services the phrase will be used with, using the appropriate International Classes. Incorrect classification is a common cause of office actions.
Application Basis: Specify whether the phrase is already "in use" in commerce or if you have an "intent-to-use" it in the future.
Filing Fees: Pay the required USPTO filing fees.
Attorney Assistance: The nuances of trademark registration for phrases, especially regarding distinctiveness and proper specimen submission, make attorney assistance highly valuable to avoid common pitfalls. The USPTO provides a helpful Trademark Information Network (TMIN) for general guidance.
Your application will be assigned to a USPTO Examining Attorney for review.
Legal Scrutiny: The attorney assesses your phrase for distinctiveness, potential confusion with existing marks, and compliance with all federal trademark laws.
Office Actions: If issues arise (e.g., the phrase is deemed too descriptive, or confusingly similar to another), an office action will be issued. Responding to these often requires legal expertise and a strong understanding of trademark law.
If your application is approved by the examining attorney, your phrase will be published in the USPTO's Official Gazette.
Public Review: This opens a 30-day period during which third parties who believe they might be harmed by your registration can formally oppose it.
If no opposition is filed or if any opposition is successfully overcome, your phrase will proceed to registration.
Certificate: You will receive a Certificate of Registration from the USPTO.
Ongoing Maintenance: To maintain your exclusive rights, you must file periodic maintenance documents (e.g., Declaration of Use) with the USPTO at specific intervals (typically between the 5th and 6th years, and every 10 years thereafter). Failing to do so can lead to abandonment of your trademark. For more detail, the USPTO's Basic Facts About Trademarks booklet is a good starting point.
Q: Can any phrase be trademarked in the USA?
A: No. A phrase must be distinctive and function as a source identifier for goods or services to be trademarked. Generic or merely descriptive phrases are typically not registrable unless they have acquired “secondary meaning” through extensive use.
Q: What is a “standard character mark” when trademarking a phrase?
A: A standard character mark protects the words of your phrase themselves, independent of any specific font, size, color, or design. This offers broad protection for the textual element of your slogan.
Q: How do I prove “use in commerce” for a phrase?
A: You need to provide a specimen (evidence) showing your phrase being used directly in connection with your goods or services. For example, a picture of a product package with the phrase, or a webpage offering services where the phrase is displayed as a tagline.
Q: What is an “office action” related to a phrase trademark?
A: An office action is a letter from the USPTO examiner indicating issues with your application, such as the phrase being too descriptive, likely to cause confusion with an existing mark, or issues with your specimen. You must respond to these by the deadline.
Q: Why should I get help from a professional to trademark a phrase?
A: The subjective nature of “distinctiveness” and “likelihood of confusion” for phrases, along with the detailed requirements for searches and application submissions, make professional guidance invaluable. Legal experts can significantly increase your chances of successful trademark registration and help navigate any complex issues.
