One of the best branding techniques for marketing a business, goods, or services is to develop an associated phrase. A phrase well associated with a brand or specific goods can help increase brand recognition and connection with the consumer.
How to Trademark a Phrase
If you are looking to develop a phrase for your business, or already have one, it can also be very important to register this phrase as a registered trademark.
Trademark Application Process for Phrases
To trademark your phrase, you will submit an application online with the USPTO. Before you submit this application, there are a few things to cover to make sure an application is the best idea.
Determine the Basis for Filing
For any trademark to be eligible for federal registration, it must be used in the ordinary course of trade in commerce. Thus, you cannot simply trademark your phrase and never actually use it in conjunction with your goods or services.
There are two main bases for filing:
- Use in commerce; and
- Intended use in commerce.
This means that to be classified as “use in commerce,” the trademark must appear somewhere on the goods themselves and then must be sold or transported within commerce. For a service mark, the mark must be used or somehow displayed in the sale or advertising of the specific services. These services need to somehow be rendered in commerce.
For intended use in commerce, this means that you intend to use the phrase in commerce in the near future. Typically you must demonstrate use of the phrase within six months after trademark registration is granted, or file for extensions.
Conduct Searches for Similar Trademarks
Before you submit your trademark application, it is a good idea to conduct searches within the USPTO database for identical or similar phrases and corresponding goods or services. The results of this search will help you to make a firm decision on whether you should go forward with registering your phrase, or if you should start thinking up new phrase ideas to trademark.
You can conduct trademark searches for phrases using the USPTO’s Trademark Electronic Search System database, also known as TESS. This shows both registered trademarks as well as pending applications.
Conducting thorough searches also is helpful to prevent a registration being turned down by the USPTO due to a likelihood of confusion with other goods or services.
To conduct the most thorough search, it can be helpful to seek legal advice. Intellectual property attorneys are skilled in conducting using the TESS database and can uncover potentially similar marks that you may not be able to uncover yourself.
Determine the Appropriate Classification for Your Trademark
The next step is to determine which of the 45 different classifications your phrase fits into for the specific goods and services involved. The USPTO uses these classifications to split up trademarks into various categories.
Take time to review the intricacies between each class that pertains to the phrase you want to trademark. From there, decide which classification is the most relevant to file under for your specific mark.
You can also file your application under a number of classifications if you think your trademark will fit into more than one. The USPTO has a Trademark ID Manual that can be helpful as you determine which classification you want to file under for the goods or services that you are offering under your trademarked phrase.
Decide on the Best Form for the Application
Next, you will want to determine the right form for your trademark registration. Use the Trademark Electronic Application System (TEAS) on the USPTO website to submit your application. There are two different filing options to select from:
- The TEAS Plus; and
- The TEAS Standard.
There are cost differences between these two systems. Each system also has different requirements that are needed to send in the application. In general, payments can be made by an electronic funds transfer, credit card, or through an existing USPTO deposit account.
This fee will not be refunded even if your trademark application is not ultimately granted. That is because this is a processing fee.
Potential Issues With Obtaining a Trademark for Your Phrase
There is of course a possibility your phrase will be rejected for trademark status from the USPTO. Phrases may be rejected by the USPTO for some of the following reasons:
- The phrase is too generic given your specific industry;
- The phrase may be too similar to another existing mark and thus cause confusion for the consumer;
- The phrase is not actually being used in commerce in conjunction with the sale of a good or service;
- The phrase is too simple or considered to be everyday vernacular;
- The phrase is disparaging or offensive.
For example, the USPTO has rejected overly simplified phrases such as “why pay more” or “the best beer in America.” This means it is a good idea to thoroughly think through and vet your phrase before seeking trademark status with the USPTO to make sure it is sufficiently unique and original.
What Is a Phrase That Can Be Trademarked?
Developing key phrases to be associated with a business can be a clever brand strategy that allows your brand to be instantly recognized by the public.
Marketing specialists know the importance of brand recognition, and building this recognition is best done through strong associations. A clever phrase can build up this association and connote positive associations with a brand.
Phrases such as Nike’s “Just do it,” KFC’s “finger lickin’ good,” or L’Oreals “because you’re worth it,” are all examples of trademarked phrases. These are well-known phrases that are legally owned by the associated businesses as a trademark for that business.
Phrases have a specific legal definition and meaning associated with the specific goods or services. Under the Trademark Manual of Examining Procedure (TMEP) issued by the United States Patent and Trademark Office (USPTO), a phrase is:
- “a group of words that are used together in a fixed expression,”
- “two or more words in sequence that form a syntactic unit that is less than a complete sentence,” and
- “a sequence of two or more words arranged in a grammatical construction and acting as a unit in a sentence.”
While this definition can sound somewhat vague and difficult to classify, a phrase essentially needs to be a combination of words that has some type of underlying meaning and message that emerges from the specific arrangement, which is then communicated out to the reader of the phrase.
Developing a Source Identifier
One of the key ways to have a phrase trademarked is to carve out a source identifier. A source identifier is the only thing that can be trademarked with the USPTO.
This means the phrase must be something which identifies the source of the product or service underlying the combination of words. The phrase itself must be used as a source identifier in order to obtain registration with the USPTO.
Thus, for example, with the Nike phrase “just do it,” people who hear it instantly associate the phrase’s source as associated with Nike. If someone likes the Nike brand they will immediately identify with and associate positive feelings when hearing the phrase.
If the person does not like the Nike brand, they will associate and have a negative response when they hear that phrase. This makes the “just do it” phrase a source identifier for Nike.
How the Uspto Analyzes Phrases
In determining whether or not to grant trademark status, the USPTO has specific guidelines that it follows. The USPTO analyzes each phrase on a case by case basis to determine if the phrase is “unitary” in the trademark sense.
To be unitary under trademark standards, the phrase as a whole must mean something apart from the sum of its parts. This means it must say something different from what society would expect to be said about the product or if it says something expected, then it must say it in an unexpected way.
The USPTO will analyze and view the phrase as a whole when it makes this determination. It will even analyze the specific placement or arrangement of the phrase on products or communications to make a complete assessment.
Whether to Trademark Your Phrase
You may be wondering if it is worth it to trademark a phrase. Trademark applications can take time and energy that you may not feel is worth it. You will want to consider how much you plan on using the phrase in commerce to market your goods or services.
If the phrase is something you plan on using consistently in your advertising and marketing, it is likely a good idea to seek a trademark in order to protect your legal rights to the phrase.
While trademarks, in general, do not need to be registered with the USPTO in order to receive legal protection, the federal registration does help in any potential legal disputes with competitors.
Federal trademark registration has its advantages. A registration helps to scare off potential competitors from utilizing your mark or a similar mark. Registration with the USPTO also gives your trademark greater validity and likelihood of success in a future trademark infringement battle that may arise in court.
When you have a federally registered trademark, it provides you with a presumption of the legal right to that trademark.
Moreover, a federal trademark registration provides you legal protection on a national scale for your phrase. If you do not seek certification from the USPTO, then you will only have common law protection for your phrase within the specific geographic region where your goods or services are marketed and provided.
Trademark Registration Protection for Phrases
Federal registration is important and helpful for legal protection of your phrase for your goods or services. Important, however, is to realize that this grants legal protection only against phrases that are sufficiently similar and used in conjunction with a sufficiently similar good or service to that underlying your trademark.
