Most people are unaware that phrases can be trademarked. But we know them when we hear them. From “Just do it” to “Got milk?” to “I’m lovin’ it,” the list of familiar phrases goes on and on.
Brand names and catchphrases are frequently trademarked. But what does it mean when a phrase is trademarked? And how difficult is the application process?
This article details the common questions individuals encounter when trademarking a phrase and navigating the process in general.
Although grammatically speaking, everyone knows what a phrase is, there is also a legal definition of the word.
According to the Trademark Manual of Examining Procedure, a phrase is “a group of words that are used together in a fixed expression,” and “a sequence of two or more words arranged in a grammatical construction and acting as a unit in a sentence.”
Certainly, this is not much help. However, it can be boiled down to a central premise: A phrase is a thought communicated through a group of words.
Branding is an essential component of building a successful business. When a particular phrase or concept is associated with a company, potential customers are more likely to understand the company’s purpose and what it provides.
If a customer holds a favorable view of a company, hearing or seeing a certain phrase will connect positive memories with the company. The opposite is also true.
However, if a company does not trademark their phrase or slogan, all of these benefits go away. Other companies can then use the phrase. This can confuse customers about who they are supporting.
In short, this helps ensure that no other business can use a similar phrase to promote its products or services. Trademarking provides a business with a creative slogan that no other similar business can use.
For a phrase to be trademarked, it must be used in a commercial context. This means the phrase must be used to sell goods or services.
Often there’s a misunderstanding about what it means to trademark a phrase.
It does not mean people are no longer allowed to say the phrase at all. Instead, the process makes sure another individual or company cannot use a similar phrase to promote similar products or services.
Here’s an example: Taylor Swift trademarked the phrase “this sick beat” from one of her famous songs. People can still sing the lyrics at the top of their lungs without fear of legal response.
That said, people cannot print the phrase to sell on T-shirts without hearing from Taylor Swift’s lawyers. That’s trademark infringement.
Also, it does not mean the phrase will be off-limits in all instances.
When an individual or company trademarks a phrase, it is in relation only to that specific usage. Because of this, an individual filing a trademark application must identify the types of goods or services the phrase will apply to.
What’s more, the phrase cannot simply describe the product or service but must be more original and unique.
Laws governing the use of intellectual property are complex. Many who hope to register a phrase seek the assistance of a trademark attorney for the registration process.
If there already exists a phrase similar to the proposed phrase, the newest application is unlikely to be successful.
In this context, a phrase is considered “deceptively similar” if it’s likely to confuse customers about the source of a product or service. However, if the phrase is used for different types of products or services, the use of the proposed phrase might be allowed.
For instance — although this is a company name and not a phrase — there’s a triangular logo inspired by the Greek letter delta. This shape has been accepted for both Delta Air Lines and Delta Dental. The products are so different that consumers will not be confused despite similar business names and logos.
The process can be difficult and complicated. According to the United States Patent and Trademark Office (USPTO), which reviews all applications, there are many rules and regulations to follow when submitting one.
Someone can either submit an application online using a trademark electronic application system on the USPTO website or on paper via mail. Interested parties can apply online, and a trademark status generally can be checked online at uspto.gov.
By following the steps below, individuals are more likely to be successful in their application.
The first step in the process is to choose a phrase. Although it may be simple, a generic phrase for the applicant’s goods and services will not be accepted.
The second step is to conduct a trademark search on the USPTO website and see if any similar phrases already exist. By checking the USPTO database, people can easily search for similarly registered trademarks.
This step is essential. Otherwise, someone may file an application, only to learn that their phrase is too similar to another to be accepted.
For example, if a burger company tried to register the phrase, “I’m lovin’ it now,” the application likely will be rejected for two reasons:
First, McDonald’s already claimed “I’m lovin’ it,” which is very similar.
Second, the application likely will be rejected because the burger company sells the same goods that McDonald’s sells under its registered trademark.
3. The third step of the process is to select the appropriate filing basis for the application.
Every application submitted to the USPTO must designate a “filing basis,” which is the grounds upon which the applicant has the right to seek the trademark protection.
Below are the various filing bases. Each application must include at least one:
Use in Commerce Basis (Trademark Act Section 1(a)): This filing basis is used when an applicant is already using the phrase in connection with their business and the sale of goods and services in interstate commerce.
Intent-to-Use Basis (Trademark Act Section 1(b)): This filing basis is used when an applicant has not already used the phrase in connection with the sale of goods/services, but they have the intent to use the phrase in the future.
Foreign Registration Basis (Trademark Act Section 44(e)): When an applicant already has a registered trademark on the phrase in a different country and would like to register for a U.S. trademark, they may apply under this filing basis.
Foreign Application Basis (Trademark Act Section 44(d)): When an applicant has applied for — but not registered — in a different country within the last 6 months, they may apply for a U.S. trademark under this filing basis.
4. The fourth step of the application process is to select the appropriate class of goods and services. Each class of goods — such as apparel or food — has a different number that the applicant must include on their application.
Because the trademark on phrases is only applicable to the particular goods or services the applicant sells, the applicant must select a numbered class for the specific goods or services on their application.
5. The final step is to pay the appropriate government filing fee. The filing fee is either $225 or $275, depending on the class of goods indicated. After the filing fee has been paid, the applicant is ready to submit the application!
Although trademarking a phrase can be critical to the success of a person’s business, trademark law often can be extremely complicated. Phrases and slogans often are rejected by the U.S. Patent and Trademark Office for the slightest mistake or misstep.
Potential applicants should contact a knowledgeable trademark law firm to discuss their idea before beginning the trademark application process.
