If you are reading this article, you likely already understand that branding really is everything and can make or break the success of a company. This is true for both large and small businesses alike and drives creative efforts to imbue the mental conception of a company with a belief and feeling that creates a positive emotional response.
When a company trademarks a phrase, it is claiming a proprietary right to the phrase in conjunction with a specific set of goods/services. No other shoe company besides NIKE can put on a marketing campaign, Just Do It, because Nike owns the trademark on this powerful phrase.
NOTE: If a proposed trademark consists of a phrase that is entirely generic, descriptive, informational, or is otherwise not being used as a trademark vis-a-vis the goods sold by the trademark holder, the phrase will not be considered a “trademark” and will be denied registrability by the USPTO.
Successful companies employ clever branding strategies to make their brands known and instantaneously recognizable.
JUST DO IT
IMPOSSIBLE IS NOTHING
GOT MILK
THINK DIFFERENT
The list goes on and on. Phrases, slogans, or tag-lines, are all linguistic word-devices which upon viewing, impart powerful messaging and ideally, even feelings.
Well, as it turns out, Phrases, Slogans, and Tag-lines have a legal meaning as well. According to the Trademark Manual of Examining Procedure (TMEP),
“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.’
Perhaps the USPTO could have written this definition a bit better but the central idea is that a “phrase” emerges from a series of words when the “phrase” is is something more than the sum of its parts. Thus, “Impossible Is Nothing”, is a phrase because when the word Impossible is put before the word Is, and then the word, Nothing, there is an emergent message and idea that is communicated.
On the most fundamental level, a trademark is a source-identifier which is (but doesn’t need to be) registered in the United States Patent and Trademark Office (USPTO). When a consumer sees a trademarked phrase tethered to a particular good/service, the consumer immediately understands the source-company of that good/service. Consider for the moment the Adidas slogan, IMPOSSIBLE IS NOTHING. If a person holds a favorable view of the Adidas Corporation, merely seeing this phrase printed on a sneaker box will likely be enough for the individual to think positive thoughts about the shoes. “The shoe is made by Adidas – it must be high quality”. However, if a person holds negative thoughts about the Adidas Corporation, merely seeing this trademarked Phrase will elicit negative feelings about the sneakers. “The shoe is made by Adidas – it’s probably made from low-quality materials”. The important point to understand is that Adidas’ Trademarked Phrase, IMPOSSIBLE IS NOTHING, is doing all of the selling. The trademark is the pitch.
It is critically important that your trademark is sufficiently distinct vis-a-vis the goods/services that you intend to list in your trademark application. For example, if you wanted to register a trademark for the phrase “Frozen Ice Cream” and your prospective goods to be listed in the trademark application are in fact “Ice Cream”, the mark would not be accepted. Why? Because trademarks that are “Generic” descriptions/words for the goods/services listed in the application are not eligible for registration. Instead, select a phrase that is not obviously related to the goods that you are selling. For example, an appropriate phrase that would be eligible for registration in this ice cream example may be something to the effect of, “You’ve never had a bigger smile.”
After determining that your phrase is inherently distinct enough, given the goods/services you intend to sell, you must now determine that no other marks are currently registered with the USPTO that would bar the admission of your phrase. To do this, you must consider the similarity of the phrase itself AND the similarity between your prospective goods/services and the competing phrase’s assigned goods/services.
For example, if you are a Sneaker company and you want to trademark the phrase, “Just Do It Now”, your trademark application will with near certainty be rejected because of the Nike Corporation’s trademark, “Just Do It.” Here, your prospective trademark is not only exceedingly similar to Nike’s but in addition, the goods that you are selling (sneakers) are identical to those goods that Nike is selling under its registered Trademark, Just Do It.
When submitting a trademark application for your phrase with the USPTO, it is important to understand that you must designate a “filing basis”, which is to say, the grounds upon which the applicant has the right to obtain protection. Every trademark application must include at least one filing basis and each filing basis is accompanied by a unique set of restrictions.
USE IN COMMERCE BASIS (Trademark Act Section 1(a)) – In the event that you have already used your phrase in connection with the sale of goods/services in Interstate Commerce, you are eligible to assign the trademark application, a Section 1(a) Classification. Remember, this must be Bona Fide Use in Commerce – Merely selling a single item to a friend in the same State does not satisfy the substantiality requirement of Section 1(a) Classification.
INTENT-TO-USE BASIS (Trademark Act Section 1(b)) – In the event that you have NOT already used your phrase in connection with the sale of goods/services in Interstate Commerce, but you have a bona fide intent, to use the phrase in the future, you may file under a Section 1(b) designation. Remember, within 6 months of filing the 1(b), you will either need to provide a Statement of Use along with a specimen illustrating that the mark is in fact, “In Use” or file a petition for an extension.
FOREIGN REGISTRATION BASIS (Trademark Act Section 44(e)) – In the event that you already have a foreign registration from a different country’s trademark office, you may apply for your US trademark application under 44(e) if the mark is the same and the goods/services are the same as the foreign application.
FOREIGN APPLICATION BASIS (Trademark Act Section 44(d)) – In the event that you have applied for (but not registered) a trademark in a different country within 6 months of now filing this present trademark application, you may file under Section 44(d). Here, this basis is commonly referred to as a “foreign priority basis” because the applicant is applying for a Priority filing date based on the foreign application, rather than the date of the filing of the U.S Application.
The USPTO categorizes every good/service into its numbered class system. For example, if an applicant were in the Apparel business and he intended on selling t-shirts under his new trademark, he would file his trademark in CL 025 which encompasses clothing.
Depending on which application type the trademark applicant selects, the Gov. Filing fees will either be $250.00 or $350.00 per class of goods. Please speak to your trademark attorney to learn which application type is most appropriate for you.
Once all if the administrative in trademark-related info has been inputted, you are ready to submit the application. Please check your work carefully – even the slightest misstep, procedural or substantive, can invite a trademark office action from the USPTO.
If your branding strategy includes the use of a catchy phrase or slogan, you should absolutely trademark your phrase. Remember, the purpose of a trademark is to tether a branding mechanism to a product or service and ultimately, by virtue of the good-will associated with the phrase, develop “the brand” and make more sales. The benefit of trademarking a phrase with the USPTO, and thus obtaining a registered trademark, rather than merely a Common-law trademark, is that the phrase will be protected throughout the United states. Thus, the applicant has the right to both enforce an infringement action against a competitor in the Trademark Trial and Appeal Board AND in federal court. The former will provide the trademark holder with the opportunity to prevent the registration of a similar phrase while the provides a forum to requesst an injunction and even monetary penalities.
Your Trademarked Phrase is only entitled to protection against infringement from a sufficiently similar phrase, operating in conjunction with sufficiently similar good or service. This is an important and subtle point but imagine for the moment that Addidas wanted to stop a competitor from using the phrase, “Impossible is Not in our Vocabulary”. Well, simply because Addidas has trademarked the phrase “Impossible is Nothing” DOES NOT grant them the right to stop every other shoe company from using the word “Impossible”. Clearly, this would not be fair and therefore, the enforcement powers of a trademarked phrase MUST be judged according to the totality of the mark, rather than by the individual components of the trademark.
Yes, but only in the immediate geographical location under which your phrase is being used in commerce and ONLY as long as you are the first actor and the phrase/slogan is not already in use and/or registered in the USPTO. Remember, Common Law Trademark rights are earned immediately upon use but DO NOT extend throughout the USA. Thus, if you are a company with ambitions to tackle markets outside of your immediate neighborhood, it is worthwile to trademark your phrase by submitting an application to the USPTO.
Perhaps. Companies that are on a tight budget may simply not have enough capital to fund a trademark application with the USPTO – this is especially true where the proposed, trademarked phrase, is set to cover multiple classes of goods/services. Remember, each class of goods/services designated by the USPTO is either $225 or $275 (depending on the type of application filed) and for a company that is offering multiple “types” of goods/services, these government filing fees can really add up.
Your desired phrase may be rejected for any of the following reasons:
Registering your trademark correctly from the start is important. Please feel free to reach out and request to speak with one of our trademark attorneys to discuss your idea. We’re here to help.
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A trademark is a type of intellectual property that consists of a recognizable sign, symbol, word, phrase, or logo used to distinguish and identify the goods or services of a particular business or individual from those of others. It serves as a form of brand identity and helps consumers identify and differentiate products or services in the marketplace. Trademarks can be registered with the appropriate government authorities, providing legal protection and exclusive rights to the owner for the use of that mark in connection with specific goods or services within a designated jurisdiction.
Yes, it is possible to trademark a phrase or slogan if it meets the necessary requirements for trademark protection. To be eligible, the phrase or slogan should be distinctive, non-generic, and capable of identifying the source of goods or services. It should go beyond merely describing the product or service and possess a unique quality that sets it apart from common usage. Conducting a thorough trademark search to ensure that the phrase or slogan is not already in use or registered by someone else is important before filing a trademark application. Working with a trademark attorney can provide guidance and increase the chances of successful registration.
You cannot patent a phrase! Patents are used to protect inventions and novel and non-obvious processes, machines, or compositions of matter. Phrases, on the other hand, typically fall under trademark protection.
Determining the eligibility of a phrase for trademark protection involves considering several factors. Here are some key considerations:
It’s important to remember that each case is unique, and determining the eligibility of a phrase for trademark protection requires a careful analysis of various factors. Consulting with a trademark attorney is highly recommended to ensure proper evaluation and guidance based on your specific circumstances.
The duration of the trademark registration process can vary depending on several factors, including the jurisdiction where you are seeking registration. In general, the process can take several months to a year or more to complete.
The timeline typically involves several stages:
It’s important to note that the timeframe mentioned above is a general estimate and can vary significantly depending on the jurisdiction and individual circumstances. Some jurisdictions have expedited or accelerated examination options available for an additional fee, which can expedite the process.
Trademark registration offers several benefits to individuals and businesses seeking to protect their brands and intellectual property. Here are some key benefits of trademark registration:
Trademarking a common phrase can be challenging, as trademark law generally aims to protect distinctive and unique marks that can differentiate goods or services in the marketplace. Common phrases that are widely used and lack distinctiveness may be considered too generic to qualify for trademark protection.
However, there are situations where a common phrase can acquire secondary meaning or distinctiveness through extensive and exclusive use in connection with specific goods or services. For example, if a common phrase has become strongly associated with a particular brand or has developed a unique significance in the minds of consumers, it may be eligible for trademark protection.
To increase the chances of successfully trademarking a common phrase, it’s important to demonstrate that the phrase has acquired secondary meaning, such as through evidence of long and continuous use, substantial marketing efforts, consumer recognition, and distinct branding elements associated with the phrase.
The eligibility for trademark protection of a common phrase depends on the specific circumstances and the jurisdiction where you seek registration. It is recommended to consult with a trademark attorney or intellectual property professional who can assess the distinctiveness and potential for registration of your specific common phrase and guide you through the trademark application process.
Yes, you can use the ™ symbol to indicate your claim of ownership and intent to seek trademark registration, even before obtaining the official registered trademark status. The ™ symbol is used to signify common law rights associated with an unregistered trademark.
Using the ™ symbol serves as a notice to others that you consider the mark to be a trademark and that you assert some level of ownership over it. It can help deter potential infringers and establish your intent to protect the mark. You can use the ™ symbol on your products, packaging, promotional materials, websites, and other places where the mark is displayed.
It’s important to note that the ™ symbol is not limited to any specific jurisdiction and can be used internationally. However, its usage should be limited to marks that are genuinely intended for trademark protection and not for generic terms or descriptive phrases.
Once your trademark is officially registered with the appropriate trademark office, you can then use the ® symbol to indicate the mark’s registered status. The ® symbol should only be used after the mark has been successfully registered.
The main difference between a phrase trademark and a design trademark lies in the elements that are protected and the type of mark they represent.
A phrase trademark, also known as a word mark or a verbal mark, focuses on protecting specific words, phrases, slogans, or combinations of words used to identify and distinguish goods or services in the marketplace. It typically consists of letters, numbers, or a combination thereof, arranged in a specific manner. Examples of phrase trademarks include brand names like “Nike” or slogans like “Just Do It.”
On the other hand, a design trademark, also known as a logo mark or a stylized mark, emphasizes the protection of visual elements such as logos, symbols, graphics, or a combination of design elements that serve as a unique identifier of the goods or services. Design trademarks go beyond mere words and incorporate distinctive visual features that can include specific colors, shapes, patterns, or artistic representations. Examples of design trademarks include the Apple logo or the Nike “Swoosh” symbol.
While both phrase trademarks and design trademarks serve the purpose of identifying and distinguishing goods or services, they differ in the form of expression. Phrase trademarks focus on protecting the verbal or textual aspects, while design trademarks prioritize the visual or graphical elements.
It’s important to note that a trademark application can be filed for a combination of both phrase and design elements, resulting in a composite mark that protects both the wording and the visual representation. This allows for comprehensive protection of the overall brand identity.
When considering trademark protection, it is advisable to assess the distinctiveness and registrability of both the phrase and design elements, as well as the potential for separate or combined registration, depending on the specific characteristics of the mark and the desired scope of protection.
Yes, it is possible to seek trademark protection for a phrase in multiple countries. However, it’s important to note that trademark rights are generally territorial, meaning they are granted and enforced within the specific jurisdictions where the mark is registered.
To secure trademark protection in multiple countries, you typically need to file separate trademark applications in each desired country or through international trademark systems, such as the Madrid System. The Madrid System allows for centralized filing of trademark applications, which can simplify the process and potentially reduce costs when seeking protection in multiple countries that are party to the Madrid Agreement and Protocol.
It’s important to consider the specific requirements and procedures of each country where you wish to seek trademark protection, as they can vary. Some countries may have different criteria for registrability, examination processes, and trademark laws.
Working with a trademark attorney or intellectual property professional experienced in international trademark law can provide valuable guidance and assistance in navigating the complexities of filing trademark applications in multiple countries. They can help determine the best strategy for protecting your phrase internationally and ensure compliance with the specific requirements of each jurisdiction.
While it is not mandatory to hire an attorney to file a trademark application, it is highly recommended to work with a qualified trademark attorney or intellectual property professional. Here’s why:
Ultimately, working with a trademark attorney provides peace of mind, professional guidance, and a higher likelihood of successful trademark registration. They can tailor their services to your specific needs and jurisdiction, providing valuable advice based on their expertise in intellectual property law.
The main difference between a registered trademark (®) and an unregistered trademark (™) lies in the legal status and level of protection they offer.
It’s important to note that the ® symbol should only be used for trademarks that have been officially registered, while the ™ symbol can be used for both registered and unregistered trademarks. The use of these symbols helps communicate the trademark owner’s legal status and intent to protect their mark.
Registering a trademark provides stronger legal protection, nationwide or international recognition, and additional benefits, as discussed in previous answers. However, unregistered trademarks can still offer some level of protection, particularly within the geographic areas where the mark is used and associated with the owner’s goods or services.
Generally, you cannot trademark a phrase if someone else is already using it for similar goods or services in a way that could cause confusion among consumers. Trademark law aims to protect consumers from confusion and unfair competition by granting exclusive rights to trademarks that are distinctive and capable of distinguishing the source of goods or services.
If another party is already using the phrase as a trademark, they may have established prior rights to it. In such cases, attempting to register the same or a confusingly similar phrase may face challenges and potential objections during the trademark examination process.
However, there are some considerations to keep in mind:
It’s crucial to conduct a thorough trademark search to assess potential conflicts and consult with a trademark attorney or intellectual property professional. They can evaluate the specific circumstances, advise on the likelihood of successful registration, and help develop a strategy that aligns with your goals while minimizing the risk of infringing on existing rights
Trademark protection can last indefinitely as long as certain requirements are met and the trademark is actively used and renewed.
In most countries, trademark rights initially arise through the act of using the mark in commerce to identify and distinguish goods or services. This is known as common law trademark rights, which can offer some level of protection even without formal registration.
However, formal trademark registration provides stronger and more extensive protection. Once a trademark is successfully registered with the appropriate trademark office, the duration of protection is typically defined by the registration term, which varies from country to country but is generally around 10 years. After the initial registration term, the trademark can be renewed for subsequent periods, often in increments of 10 years, as long as the mark continues to be used and the renewal fees are paid.
To maintain trademark protection, it is essential to actively use the mark in commerce for the goods or services it represents. Non-use or abandonment of a trademark can lead to the loss of rights or cancellation of the registration. Trademark offices often require evidence of use during the renewal process to ensure that the mark remains in use and serves its intended purpose as an identifier of the source of goods or services.
It’s important to stay vigilant and monitor the trademark landscape for potential infringements or unauthorized use of your mark. Taking appropriate action against infringers helps safeguard your rights and maintain the exclusivity associated with your trademark.
Yes, it is possible to trademark a phrase for different categories of goods or services, as long as the phrase meets the requirements for distinctiveness and does not conflict with existing trademarks in those categories.
Trademark protection is specific to the goods or services in connection with which the mark is used. Trademark offices often classify goods and services into different categories or classes based on the International Classification of Goods and Services (Nice Classification). Each class represents a distinct category of goods or services.
When filing a trademark application, you can select one or more classes to specify the goods or services for which you seek protection. If your phrase is distinctive and capable of distinguishing your goods or services in each selected class, you may obtain trademark protection for those categories.
It’s important to consider potential conflicts with existing trademarks in the same or related categories. If there are already registered trademarks that are similar or identical to your proposed phrase in the desired classes, it may be more challenging to obtain trademark protection. In such cases, it’s advisable to consult with a trademark attorney or intellectual property professional to assess the availability and registrability of your phrase in each desired category and to explore strategies to mitigate any potential conflicts.
Additionally, it’s worth noting that filing a trademark application in multiple classes may involve additional fees and requirements specific to each jurisdiction.
Yes, it is possible to trademark a phrase that includes a person’s name, but there are certain considerations and requirements to keep in mind.
When seeking to trademark a phrase that includes a person’s name, the trademark office will evaluate the distinctiveness and registrability of the mark. Generally, for a person’s name to be eligible for trademark protection, it should have acquired secondary meaning or distinctiveness beyond merely identifying the individual.
Here are some factors to consider:
Trademark rights are generally territorial, meaning they are granted and enforced within the specific jurisdictions where the mark is registered. Therefore, to enforce your trademark rights internationally, you need to secure protection in each desired country or through international trademark systems.
Here are some avenues to enforce your trademark rights internationally:
Enforcing trademark rights internationally requires a thorough understanding of the intellectual property laws and procedures in each relevant jurisdiction. It is advisable to work with experienced trademark attorneys or intellectual property professionals who specialize in international trademark law. They can help navigate the complexities, assess the best strategies for enforcement, and guide you through the process of protecting and enforcing your trademark rights on an international scale.
The Madrid System for international trademark registration is a centralized filing system that facilitates the registration and management of trademarks in multiple countries through a single application. It is governed by the Madrid Agreement and the Madrid Protocol, both administered by the World Intellectual Property Organization (WIPO).
The Madrid System provides a streamlined and cost-effective way for trademark owners to seek protection in multiple countries simultaneously. Instead of filing separate applications in each country, applicants can submit a single international application to the International Bureau of WIPO, designating the countries where they seek protection.
Here are key features of the Madrid System:
It’s important to note that the Madrid System does not grant an “international trademark.” Instead, it facilitates the process of obtaining trademark protection in multiple countries through a centralized application and management system.
Applicants considering international trademark protection should carefully evaluate the advantages and limitations of the Madrid System, as not all countries are members, and the system has specific requirements and procedures.
Yes, it is possible to trademark a phrase in a foreign language, as long as the phrase meets the requirements for trademark protection in the desired jurisdiction.
Trademark laws generally do not restrict the language in which a mark can be registered. The key considerations for trademark registration, regardless of the language used, are the distinctiveness, availability, and appropriateness of the mark for the goods or services it represents.
Here are some factors to consider when seeking to trademark a phrase in a foreign language:
Once a trademark has been registered, making changes to the mark can be more complicated and may require additional steps or considerations. However, it is possible to make certain modifications to a registered trademark under certain circumstances. Here are some key points to consider:
Protecting your trademark from infringement is crucial to safeguard your brand identity and reputation. Here are some key steps you can take to protect your trademark:
File Your Trademark Application
