Slogans have always been a creative and smart way to market to the consumer. Slogans can help to solidify brand awareness to the public and build increased brand recognition.
How to Trademark a Slogan
If your business has a slogan that is associated with your brand, it can be smart to get a trademark to maintain the best intellectual property rights for it. We’ll explain the application process for properly trademarking a slogan, as well as the types of slogans you can trademark.
Trademark Application Process for Slogans
To trademark your slogan, you will submit a trademark application online with the USPTO. Set out below are the basic steps to take to apply for your trademark.
Determine the Basis for Filing
Before you file your applications, make sure your slogan is being used (or will be used) in the ordinary course of trade in commerce in order to be eligible for federal trademark registration. This means you cannot simply trademark a slogan and then never actually use it in conjunction with the associated products or services.
There are two main bases for trademark filing:
- The slogan must be used in commerce; or
- The slogan is intended to be used in commerce.
For a slogan describing goods to be classified as “use in commerce,” the slogan must:
- appear on the goods themselves, and
- must be sold or transported within commerce.
For a slogan describing services, the mark must be used or somehow displayed in the sale or advertising of the specific services. These services, in turn, must be somehow rendered in commerce.
If you are not yet using your slogan, you can file under the intended use in commerce basis. This means you must certify that you intend to use the slogan in commerce in the near future.
Usually, you must thereafter demonstrate you have in fact used the slogan in commerce within six months after trademark registration is granted. If you aren’t able to use it within this timeframe, you can file an extension.
Conduct Searches for Similar Slogans Already Trademarked
Once you have confirmed the basis for your filing, you will want to spend some time conducting searches within the USPTO database for identical or substantially similar slogans. These can be especially problematic when they correspond to identical or similar goods or services.
By conducting thorough searches, you can make a calculated decision on whether you should go forward with registering your slogan, or if you should start brainstorming new slogan ideas.
All trademark searches, including slogans, can be conducted using the USPTO’s Trademark Electronic Search System database, also called TESS. This database is made up of both registered trademarks and pending trademark applications.
The USPTO will deny federal trademark registration if a slogan is too similar to another, already registered slogan. Conducting these searches will give you insight into how unique your slogan really is, or if there is a possibility that your application may get rejected.
Determine the Appropriate Classification for Your Slogan
Next, study and make a determination about which of the 45 different classifications your slogan fits into for the specific goods and services involved. The USPTO uses the classifications to split up trademarks into different categories.
Study the intricacies between the classes that pertain to your trademark and determine which classification is the best to file under for your specific mark.
If you think your trademark may fall under more than one classification, you can also file your application under a number of classifications. The USPTO has a Trademark ID Manual that can be helpful as you make the classification determination for the goods or services that you are offering under your trademark.
Determine the Form for the Application
Now, you are ready to submit your trademark application. Make a determination of which application form is the best for your slogan. Use the Trademark Electronic Application System (TEAS) on the USPTO website to submit your application. There are two different filing options within this system:
- The TEAS Plus; and
- The TEAS Standard.
Keep in mind that costs range between the two types of applications. Each option also has a different set of requirements that are necessary to submit the application. In general, payments can be made by:
- credit card,
- electronic funds transfer, or
- through an existing USPTO deposit account.
You can’t get a refund on the application fee even if your trademark application is not ultimately granted by the USPTO because it is classified as a processing fee.
Pay Application Fees
As part of your trademark application with the USPTO, you will need to pay the necessary application fees. The fees will be different depending on the system (TEAS Plus vs. TEAS Standard). The fees will also vary depending on how many classifications you chose to file under for your slogan. Each classification will cost around $225 to $275 for each individual one.
What Is a Slogan That Can Be Trademarked?
A memorable motto or phrase used in a clan, political, commercial, religious, and other context as a repetitive expression of an idea or purpose, with the goal of persuading members of the public or a more defined target group.
The Trademark Manual of Examining Procedure (TMEP) issued by the USPTO describes it as follows:
A slogan is a type of phrase and is defined as “a brief attention-getting phrase used in advertising or promotion” and “a catch phrase used to advertise a product.”
Essentially, it is a short and memorable phrase typically used for advertising a business. Examples of famous slogans are things such as “just do it,” “got milk,” or “where’s the beef.” Well crafted slogans for your business can be a clever strategy that allows your brand to be instantly recognized by the public.
Types of Slogans
There are different types of trademarks that your slogan can fall under.
Descriptive Slogans
As an initial note, descriptive trademarks are those that simply describe the goods or services to which they are applied. These types of generic, descriptive marks cannot be registered with the USPTO. In the same way, generic, descriptive slogans will not be approved for federal registration by the USPTO.
Suggestive Slogans
Suggestive slogans are slogans that suggest or reference goods or services rather than specifically name them. Consumers must make an inference between the slogan and the actual goods or services. These types of slogans, and their resulting trademarks, are incredibly strong.
A great example of a suggestive slogan is Nike’s “just do it.” The slogan does not name Nike at all, but rather Nike has built up an association between the slogan and their brand.
Necessary Elements to Trademark a Slogan
There are three main elements your slogan must meet to be eligible for a trademark:
- The slogan must not be registered to another business or individual for any related goods, product or services;
- The slogan must be used in conjunction with the sale of goods, product or services;
- The slogan must do more than simply describe the underlying natures of the goods, product or services.
This means your slogan should be
- Original;
- Good quality; and
- Distinctive.
What slogan meets this? Your slogan shouldn’t just use a simple descriptive phrase as a slogan that describes overarching goods or services. For example, McDonald’s “I’m lovin’ it” slogan doesn’t mention burgers, fries, or the company name. Instead, it is a phrase that can be associated with McDonald’s food because it has become well known within society.
Why Trademark a Slogan?
Federal trademark registration for your slogan has substantial benefits you should strongly consider. It’s also good to know up front that slogans can still be protected under “common law” as a type of intellectual property. Common law is the body of law created by judges that arises under judicial precedent.
This means that as soon as you start using the trademark, it can be protected under common law without any formal registration. But this legal protection only extends so far, and your legal rights are not as extensive. For example, common law only protects your slogan from use within the immediate geographic region that you are in.
The United States Patent and Trademark Office (USPTO) provides applicants with federal trademark registration. This federal registration will give your slogan stronger intellectual property protection, which can be important down the line in any potential litigation.
Federal trademark registration often deters competitors from using your slogan, or a similar one. Another plus is that, when you register, your slogan will show up on the USPTO website and will appear in trademark searches. This can help prevent others from using your slogan, or even a similar one, as companies often search this database before coming up with slogans of their own.
USPTO registration also gives your slogan a nationwide validity rather than just a specific geographic scope. Finally, USPTO trademark registration also gives your slogan 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.
Why Not Trademark a Slogan?
Trademarking your slogan with the USPTO is typically a great idea because it is pretty easy to do and provides you with greater legal protection.
But, if your finances are tight right now, it may make sense to wait on pursuing a federal trademark. This is especially true since you will still have some legal protection under common law to use your slogan.
Limits of a Trademarked Slogan
It is also important to know that your slogan, if trademarked, will be protected against infringement by another slogan only if it is a sufficiently similar phrase and only if it is operated in conjunction with sufficiently similar goods or services.
This means a restaurant would generally not be able to seek infringement damages against an entirely different type of business.
Trademark Registration Protection for Your Slogan
Federal registration with the USPTO helps to grant you strong legal protection for your slogan. Importantly, the trademark rights protect slogans so long as the slogan is used in conjunction with a sufficiently similar good or service to that underlying your trademark.
USPTO May Reject Trademark Approval for a Slogan
The USPTO may choose to reject your trademark application for your slogan. This can happen for a number of reasons, such as:
- The slogan is too vague or generic, depending on the industry you are in;
- The slogan is considered to be everyday vernacular or overly simplified;
- The slogan is not actually being used in commerce in conjunction with the sale of a good or service;
- The slogan could be too similar to an existing mark which could create confusion for the consumer;
- The slogan is offensive or disparaging.
Before taking the time to go through the trademark process for your slogan, it’s encouraged to thoroughly think through any of the reasons the slogan could potentially get rejected.
