Business August 28, 2020 Last updated October 22nd, 2021 1,220 Reads share

How to Trademark a Phrase: Everything Businesses Need to Know

Image Credit: DepositPhotos

Consider the Adidas company’s phrase, “Impossible is Nothing.” How does it make you feel? Would you spend $200 on a Basketball Shoe that is marketed under this slogan? Do you believe somewhere in the back of your mind that you will be more athletic when wearing these shoes? Well, the Adidas company thinks the answer to all of these questions is a resounding, yes. Human psychology dictates that consumers connect on a deeply emotional level with meaningful and powerful messaging.  Pick the right phrase to market your product, and you will crush the competition. Of course, once you select your phrase, you must protect it and shield it from appropriation by competitors. How? By registering a trademark.

What Is a Trademark?

A trademark, at its core, is simply a symbol that is paired with a product or service. It is a branding device, such as a name, logo, or phrase that, when used alongside the sale of a good or service, enables a consumer to understand the source-company that is selling the goods/service.  The trademark imbues a particular set of beliefs and conceptions about the product merely because the trademark is attached to it. For example, when a consumer in the market for watches sees the iconic Breitling symbol on the face of the watch, he/she is likely to think that the watch is a quality product and, therefore, worthy of the steep price.

A name or logo only becomes a trademark, in the legal sense, when it is used in conjunction with the sale of a good/service and obtains federal rights when those sales are made across state lines. Thus, to accrue federal protection, a boutique watch company in New York using the phrase, “We Keep You Punctual” must sell watches to consumers outside of the State of New York.  Obtaining federal trademark rights through trademark registration with the United States Patent and Trademark Office (USPTO) would, in this case, prevent any other watchmaker from marketing their watches under the phrase, “We Keep You Punctual” throughout the United States.

Step 1: Conduct a Trademark Search

A trademark’s eligibility for registration with the USPTO is a function of its “distinctiveness” and the existence of existing trademarks that are already in use for the same goods/services.  , the more “distinct” the prospective trademark is given the goods/services sold under the banner of the trademark, the more likely it is to obtain trademark protection. In contrast, the less “distinct,” the less eligible it is for protection. For example, the phrase “We Keep You Punctual” for the watch category is quite distinct, while “TIMEKEEPER” for the watch category is not distinct.

Once you determine that the trademark is in theory distinct enough for registration, the applicant must examine the pending and registered trademarks in the USPTO to ascertain whether an identical trademark or sufficiently similar trademark, for the same set of goods, already exists. If no such mark exists, you are ready to proceed to the next step.

Step 2: Determine Ownership of the Trademark

When submitting a trademark application with the USPTO, you need to instruct the Office who the actual owner of the mark will be. You will find that you can choose from one of several options, including but not limited to, Individuals, Corporations, Foreign Citizens, LLCs, Partnerships, Trusts,  Estates, and Joint Ventures.

The trademark owner should be the one who directly controls the mark, or who sells the products or services and licenses them to others.  If you have co-founded a company with multiple partners, it is wise to register the trademark under the auspices of an LLC or Corporation rather than assign the trademark rights to anyone individual owner.

Of course, please make sure that your business’s entity is active before you apply for a trademark and that the person or entity listed on the TM application as the owner, must be the rightful owner. Otherwise, you could face some serious legal issues like trademark cancellation down the road.

Step 3:  Trademark Goods and Classes

When registering your phrase for trademark protection with the USPTO, you must assign the specific goods/services, which are to be covered under the phrase AND the “Class” most appropriate to house these goods/services.  You may choose from 45 classes of products and services. For example, if you are selling watches, your trademarked Goods would go under class 014. Maybe you fix watches as well. If you are in the businesses of providing transport services exclusively for high-end watch companies, you will select CL 039.  The key to understanding here is that the trademark class must correspond precisely with the goods/services sold under the trademark.

Step 4: Select the “Basis” for the Trademark and Submit the Government Filing Fees

As this article has hopefully made clear already, a phrase cannot transcend into a full-fledged trademark until it is actually used in interstate commerce. However, the astute reader might very justifiably wonder, what if I want to protect my trademark before making any sales?  Well, for this reason, the USPTO allows the trademark applicant to apply either under a 1(a) designation, suggesting that the trademark is already in use OR a 1(b) designation, asserting that the applicant intends to use the mark in commerce at a later date.  The USPTO charges a flat fee of $225 or $275 per class of goods upon applying regardless of whether or not the TM is filed under a 1(a) or a 1(b) but if it is filed as a 1(b), the applicant will have to pay an additional $100/Class at a later date.

Step 5: Wait for an Update From the USPTO

Of course, conducting a thorough TM search and filling out your trademark application’s phrase correctly is absolutely critical. If the USPTO finds any issues with the trademark application, you will receive an Office Action detailing the defects with the trademark application and what, if anything, can be done to fix it.  Assuming that you have already used your mark in interstate commerce and have filed under a 1(a), expect to hear from the USPTO in about six months with a publication date for the trademark to post to the Official Gazette and ultimately a Registration Certificate.  If you filed under a 1(b), Intent to use Application, the timeline will vary a bit, and you can likely expect to receive your trademark closer to a year from the time it is submitted.

Making Phrases Work for You

Remember, ultimately, the purpose of a phrase is to cultivate a feeling in the consumer when observing the chosen expression.  The extent to which you can achieve this subtle emotional transformation in the consumer will dictate your success. So, ask yourself, how do you want your target customer to feel when viewing your phrase? Powerful? Sad? Empathetic? Invigorated? Choose wisely.

DepositPhotos – trademark law

Lori Wade

Lori Wade

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