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How To Trademark A Phrase

How to Trademark a Phrase: Complete Step-by-Step Guide for 2024

Trady

Trady

12 June 202413 min read

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How to Trademark a Phrase: Complete Step-by-Step Guide for 2024

Are you thinking about trademarking a phrase?

Whether it's a catchy slogan or a unique expression, trademarking can protect your intellectual property and ensure your brand stands out.

This guide will cover everything you need to know, from understanding what a trademark is to the step-by-step process of registering your phrase.

Let's dive in and simplify the world of trademarks for you!

Is a phrase the same as a slogan?

A phrase and a slogan are often used interchangeably but have distinct purposes.

A phrase is a sequence of words that conveys an idea or concept.

In contrast, a slogan is a specific type of phrase used for advertising or branding, designed to be memorable and to encapsulate the essence of a brand or product.

For example, Nike's slogan, "Just Do It," promotes the brand's spirit and identity.

So, while all slogans are phrases, not all phrases are slogans.

What is a trademark?

Before we get into how to trademark a phrase, let’s delve deeper into what a trademark is:

Victoria Walker Attorney

According to trademark attorney Victoria Walker, “A trademark serves as a source identifier, distinguishing and identifying the origin of goods or services offered to consumers.”

It provides legal protection to the owner, preventing others from using a similar trademark that could cause confusion for customers.

Trademarks are vital for creating brand recognition and loyalty, ensuring that customers can easily identify the source of a product or service.

By trademarking a phrase, you safeguard your unique expression, giving yourself exclusive rights to use it in connection with your goods or services.

Learn more about trademarks and the trademark registration process in our article “The Trademark Registration Process in 4 Key Stages.”

How do I know if my phrase is eligible for trademark protection?

You might be wondering, “Can I trademark a phrase?”

To determine if your phrase is eligible for trademark protection, consider the following criteria:

  • Distinctiveness: Your phrase should be unique and not generic. Phrases that are purely descriptive or commonly used in everyday language are harder to trademark. The more distinctive and unique your phrase, the better the chances it's eligible for trademark protection.

For example, coined or fanciful phrases like "Kodak" are more likely to be approved than descriptive phrases like “Best Camera.”

  • Non-deceptive: The phrase should not be misleading about the nature, quality, or origin of your goods or services. If your phrase implies a false association or gives an incorrect impression of your product or service, it will not be eligible for trademark protection.

For instance, a phrase like "100% Pure" for a product that isn't wholly pure would be considered deceptive.

  • Non-conflicting: Ensure that your phrase doesn't conflict with existing trademarks. This means thoroughly searching Trademarkia, the USPTO database, or other trademark databases to check for any similar or identical phrases already registered. If there is a high likelihood of confusion with an existing trademark, your application may be rejected.

For example, trying to trademark "Just Do It Now" would conflict with Nike's existing trademark.

  • Use in commerce: The phrase must be used in commerce or have a bona fide intention to be used in commerce in connection with your goods or services. This means you should either already be using the phrase in a commercial setting or have a clear plan to do so.

Proof of use may include marketing materials, product packaging, or other commercial uses of the phrase.

A step-by-step guide to trademark a phrase

A step by step guide to trademark a phrase

Trademarking a phrase can seem daunting.

But breaking it down into simple steps makes it much more straightforward.

This guide will walk you through each stage of the process, from ensuring your phrase is original to completing your trademark registration online with Trademarkia.

By following these steps, you'll be well on your way to protecting your unique expression and establishing a solid brand presence.

Let's get started!

1. Ensure the phrase is original

The first step in trademarking a phrase is to ensure its originality. An original phrase stands out and is more likely to be granted trademark protection.

Think creatively and come up with a phrase that is distinctive and memorable.

Avoid common phrases or clichés.

Ensuring your phrase is original is crucial to avoid legal issues and increase the likelihood of successful trademark registration.

2. Search Trademarkia to find your phrase

After creating your original phrase, the next step is to search Trademarkia to check if your phrase is available for trademark registration.

Here's how to do it:

  • Visit Trademarkia: Go to the Trademarkia website to search for existing trademarks.
  • Enter your phrase: Type your phrase into the search bar and hit enter. Trademarkia will display results showing similar or identical phrases that are already registered or pending registration.
  • Review search results: Carefully review the search results to see if your phrase or a similar one is already in use. Pay attention to the classes of goods and services associated with the trademarks, as conflicts within the same class are more likely to cause issues.
  • Refine your trademark phrase search: If your initial search shows conflicting results, try variations of your phrase or different keywords to ensure thoroughness. This step helps confirm that your phrase is truly unique and doesn't infringe on existing trademarks.

Using Trademarkia for this search helps you avoid potential conflicts and increases the chances of your trademark application being accepted.

Want to better understand how to use our trademark search engine? Read our "Trademark Search Tips" guide.

3. Choose the correct filing basis

Choosing the correct filing basis is crucial for your trademark application. There are two primary filing bases to consider:

  1. Use in commerce: Select this basis if you're already using your phrase in commerce. You'll need to provide evidence of the phrase being used in the marketplace, such as on product packaging, advertisements, or websites. This basis shows that your phrase is actively used in connection with your goods or services.
  2. Intent to use: Choose this basis if you have a bona fide intention to use the phrase in commerce but are not currently using it. This option allows you to secure your rights to the phrase before using it commercially. Once you begin using the phrase, you must submit additional documentation to the USPTO to demonstrate its use in commerce.

Selecting the appropriate filing basis ensures that your trademark application accurately reflects your current situation and intentions, which is essential for a successful registration process.

4. Pick the right classes for your goods or services

Selecting the appropriate classes for your goods or services is a critical step in the trademark registration process.

The United States Patent and Trademark Office (USPTO) categorizes goods and services into 45 classes.

(Learn about each of these classes on our YouTube channel.)

Here's how to pick the right ones:

  • Understand your offerings: clearly define what goods or services your phrase will be associated with. Be specific about the products or services you offer or plan to offer.
  • Research classes: familiarize yourself with the USPTO's classification system. You can find a list of classes on the USPTO website, which describes the types of goods and services in each class. For example, Class 25 covers clothing, while Class 35 covers advertising and business services.
  • Match your offerings: identify the classes that best match your goods or services. You may need to select multiple classes if your phrase applies to different types of products or services. For example, if you sell both clothing and accessories, you might need to file in Class 25 (clothing) and Class 18 (accessories).
  • Seek advice if needed: if you're still deciding which classes to choose, consider consulting with one of Trademarkia's trademark attorneys for guidance.

Choosing the wrong class can delay your application or reduce its effectiveness.

5. File your trademark with Trademarkia

Once you have ensured the originality of your phrase, conducted a thorough search, chosen the right filing basis, and selected the appropriate classes, it's time to file your trademark application with Trademarkia. 

Here's the last step for how to trademark a phrase:

  • Create an account: start by creating an account on Trademarkia's website if you don't already have one. This will allow you to manage your application and track its progress.
  • Complete the application form: fill out the online trademark application form. You must provide details about your phrase, the chosen filing basis, and your contact information.
  • Upload supporting documents: if you are filing based on "use in commerce," be prepared to upload evidence showing your phrase in use, such as product packaging, marketing materials, or website screenshots.
  • Review and submit: carefully review your application for accuracy and completeness. Double-check all details to avoid any mistakes that could delay the process. Once you're satisfied, submit your application.
  • Pay the filing fee: Trademarkia charges a fee for filing your trademark application. Make sure to pay the required fee to finalize your submission. The cost will depend on the number of classes you are filing under.
  • Track your application: after filing, you can track the status of your application through your Trademarkia account. Trademarkia will keep you updated on any developments or requests for additional information from the USPTO.

Not sure if you need a trademark? Watch the below video where trademark attorney Derrick Davis takes us through the importance of federal trademark registration:

What are some examples of famously registered phrases?

Many brands have successfully registered iconic phrases that have become synonymous with their identity.

See Nike’s first commercial using their now famous “Just Do It” slogan. 

Here are some examples of famously registered phrases:

  • "Just Do It" (Nike): This slogan is one of the most recognizable worldwide and is closely associated with Nike's brand identity and motivational messaging.
  • "I'm Lovin' It" (McDonald's): This catchy phrase is part of McDonald's global advertising campaign and is instantly linked to the fast-food giant.
  • "Because You're Worth It" (L'Oréal): This phrase emphasizes the brand's commitment to quality and has become a powerful statement in L'Oréal's marketing.
  • "Think Different" (Apple): This slogan reflects Apple's innovative spirit and has played a significant role in its branding strategy.
  • "Have a Break, Have a Kit Kat" (Kit Kat): This phrase has been used for decades to promote Kit Kat bars and is well-known among consumers.

Why might my trademark application be rejected? (7 main reasons)

Understanding the common reasons for trademark application rejections can help avoid pitfalls.

Here are the seven main reasons why your trademark application might be rejected:

  1. Lack of distinctiveness: If your phrase is too generic or descriptive, it may not be considered distinctive enough to warrant trademark protection. Phrases that merely describe the goods or services without unique identifiers are often rejected.
  2. Likelihood of confusion: Your application may be rejected if your phrase is too similar to an existing trademark. The USPTO evaluates whether the public might confuse your phrase with another registered trademark, especially if they are in the same class of goods or services.
  3. Deceptive or misleading phrases: Phrases that mislead consumers about the origin, quality, or nature of the goods or services will be rejected. For example, a phrase implying a product is made from a particular material when it's not can lead to rejection.
  4. Use of prohibited terms: Certain terms and symbols are prohibited in trademarks. These include government insignias, flags, and scandalous or offensive language. Including such elements in your phrase can result in rejection.
  5. Failure to demonstrate use in commerce: If you claim "use in commerce" as your filing basis, you must provide adequate evidence that your phrase is actively used in the marketplace. Failure to do so can lead to rejection.
  6. Improper classification: If you select the wrong class for your goods or services, your application may be rejected. Accurately classifying your offerings is essential to avoid this issue.
  7. Incomplete application: Any errors or omissions in your application can cause delays or rejection. Ensure that all information is accurate, complete, and properly submitted.

A trademark lawyer can help ensure that you comply with all the federal trademark rules and that your US trademark registration is successful.

Get in touch with one of our trademark lawyers today.

How long does trademark registration take?

Trademark registration is a detailed process that can take 12 to 18 months to complete.

Here's a breakdown of the timeline:

  • Initial processing (4-6 months): After submitting your application, the USPTO will review it to ensure it meets all requirements. This includes checking for any conflicting trademarks and verifying the distinctiveness of your phrase.
  • Office actions (3-6 months): If the USPTO finds issues with your application, they will issue an office action detailing the problems. You will have six months to respond. The time needed to address these issues can vary.
  • Publication in the Official Gazette (3 months): If your application passes the initial review, it will be published in the Official Gazette. This publication period lasts 30 days, during which anyone can oppose your trademark.
  • Issuance of the registration certificate (2-3 months): If there are no oppositions, or if oppositions are resolved in your favor, the USPTO will issue a registration certificate. This final step typically takes two to three months.

Overall, the entire process usually takes about 12 to 18 months from start to finish​​.

Various factors, including the complexity of your application and the workload at the USPTO can influence this timeline.

What are the benefits of trademarking a phrase?

Registered trademarks provide several key benefits that can significantly enhance and protect your brand.

Firstly, it gives you exclusive rights to use the trademarked phrase in connection with your goods or services.

This exclusivity prevents others from using a similar phrase that could confuse consumers or dilute your brand's distinctiveness.

Secondly, a registered trademark can serve as a powerful deterrent against potential infringers.

The legal protection offered by a trademark registration makes it easier to take action against unauthorized use of your phrase.

This can include sending cease-and-desist letters or pursuing legal action if necessary.

Additionally, owning a trademark can enhance your brand's value.

A trademark is an intangible asset that can increase the overall value of your business.

This is particularly beneficial if you plan to sell your business or attract investors, as a strong trademark portfolio can be a significant selling point.

Another significant benefit is the ability to use the ® symbol, which indicates that your phrase is officially registered.

This symbol serves as a public notice of your trademark rights, helping to establish your brand's legitimacy and reputation further.

Trademark registration also provides a basis for international trademark protection.

Once you have a registered trademark in your home country, it can facilitate the process of securing trademark rights in other countries through treaties and international agreements.

This can be particularly valuable for businesses operating in the online retail space​ (USPTO).

Are common law trademark rights enough?

According to trademark law:

Common law trademark rights offer some protection when you use your phrase in commerce, but they have limitations.

These rights are typically restricted to the geographic area where you operate, meaning your protection doesn't extend nationwide.

This can leave your phrase vulnerable to use by others in different regions.

Enforcing common law rights is also more challenging and costly compared to a registered trademark. Without federal registration, proving your rights in a dispute is harder.

A registered trademark provides a legal presumption of ownership and exclusive nationwide rights, simplifying enforcement.

Additionally, federal registration creates a public record, serving as notice of your claim to the phrase. This can deter others from using similar marks.

Common law rights lack this visibility, increasing the risk of conflicts.

How Trademarkia's trademark attorneys can help you file

How Trademarkia's attorneys can help you file

Trademarkia's experienced trademark attorneys can simplify the trademark filing process for you.

They provide expert guidance on ensuring your phrase is original, conducting thorough searches, selecting the correct filing basis, and choosing the suitable classes for your goods or services.

Their expertise helps avoid common pitfalls and increases the chances of successful registration.

Ready to protect your brand? Contact Trademarkia's trademark registration attorneys today to start your federal trademark registration and safeguard your unique phrase.

Get started now.


FAQs

How much does it cost to trademark a phrase?

When filing through the USPTO's online system, the cost to trademark a phrase typically ranges from $250 to $350 per class of goods or services.

How do you legally trademark a phrase?

To legally trademark a phrase, conduct a search to ensure it's unique, choose the appropriate filing basis and classes, and then submit an application through the USPTO. You may want to consult a trademark attorney to streamline the process​.

Is it worth it to trademark a phrase?

Yes, trademarking a phrase is worth it if you want exclusive rights, legal protection, and enhanced brand recognition. It prevents others from using similar phrases and can add significant value to your brand​.

How long does a trademark last?

A trademark lasts for ten years from the registration date. It can also be renewed indefinitely in 10-year increments, provided you continue to use the mark and file the necessary maintenance documents​.

Is it better to trademark a word or logo?

It depends on your branding strategy. Trademarking a word provides broader protection for the phrase while trademarking a logo protects the specific design. Often, businesses benefit from trademarking both to protect their brand fully​.

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AUTHOR

Meet Trady, Trademarkia's AI "Creative Owl" and the whimsical author behind our blog. Trady isn't just any virtual writer; this lively owl combines inventive wordplay with a deep understanding of trademark law. By day, Trady dives into the latest trademark filings and legal trends. By night, it perches high, sharing trademark wisdom and fun facts. Whether you're a legal expert or a budding entrepreneur, Trady's posts offer a light-hearted yet insightful journey into intellectual property. Join Trady and explore trademarks with wisdom and playfulness in every post!