Taylor Swift made headlines when she filed trademark applications for several phrases from her “1989” album, including “this sick beat.” Paris Hilton owns trademarks for “that’s hot.” And Nike has built its brand on the trademarked phrase “Just Do It.”
Trademarking helps ensure that no one else can use a similar phrase to promote similar products or services.
When Can You Trademark a Phrase?
Phrases are subject to certain trademark rules. First, you must use the phrase in commerce, or intend to use it in commerce. That means that you must use it to sell some sort of goods or services.
You can’t trademark a phrase just because you like it and don’t want anyone else to say it.
Second, when you file a trademark application, you must identify the types of goods or services that you want to use your trademark on. To be eligible for trademark protection, your phrase can’t just describe those goods or services—it must be more unique than that. Paris Hilton was granted trademarks to use “that’s hot” in connection with clothing, portable electronics and alcoholic beverages. But she might have had trouble registering “that’s hot” as a trademark for fresh coffee or portable heaters.
Third, you can’t trademark a phrase or trademark a word if it is deceptively similar to a phrase or word that’s already been trademarked for the same type of goods or services. Phrases are deceptively similar if people are likely to be confused about the source of a product or service.
How to Trademark a Phrase
The application process to trademark a phrase is simple.
Step 1: Conduct a Trademark Phrase Search
Before you attempt to trademark a phrase, you should make sure that no one else has trademarked a similar phrase for the same type of goods or services. Visit the U.S. Patent and Trademark Office (USPTO) online at USPTO.gov and search their Trademark Electronic Search System, or TESS, for phrases that are identical or similar to the one you want to trademark.
Step 2: Fill Out the Trademark Phrase Application
You can apply online using the U.S. trademark office Trademark Electronic Application System. You can also fill out and mail a paper application. Your application must include certain information:
- The owner of the mark and the name and address for correspondence
- Whether you are registering your phrase in standard character format or in special character format. Standard character format protects your phrase no matter what color, font or style you display it in, while special character format protects only a particular font or style.
- The type of goods or services your mark is used for. “Goods” are things that you sell, while “services” are things that you do for other people. For example, tennis rackets are a good, but tennis lessons are a service. It is important to accurately identify the type of goods or services because if you get it wrong, you can’t change it later.
- Whether you are filing based on use in commerce or intent to use in commerce. If you are using your mark now, file based on “use in commerce.” If you plan to use it within the next few years, file based on “intent to use.”
- A picture and specimen of your phrase. If you are registering your phrase as a special character mark, you’ll need to provide a picture or drawing that shows what your phrase looks like. You must also provide a specimen of your phrase. The specimen is a picture of your phrase being used on your goods or services. For goods, your specimen might be a product label or package. For services, it might be a brochure or sign.
Step 3: Submit the Application and Pay the Trademark Application Fee
As of January 2015, USPTO charges $225-$325 per class of goods or services registered electronically, and $375 per class of goods and services registered via paper application. The fee is non-refundable, meaning that you won’t get your money back if your trademark registration is denied.
Step 4: Respond Promptly to Office Actions or Other USPTO Correspondence
Your trademark application will be assigned to an examining attorney for review. If the attorney identifies problems with your application, you may receive an Office Action. The Office Action will explain the problem and give you a deadline to resolve it. It’s important to respond within the deadline to avoid having your application denied.
Step 5: Wait for Your Trademark Registration to be Approved
At best, it takes several months for a trademark application to be approved. If there are problems or objections, the process may take longer. While you’re waiting, you can use the symbol “TM” or “SM” with your trademark or service mark.
Step 6: Maintain Your Trademark
Once your trademark is registered, you can use the registered trademark symbol, ®. You will need to periodically file maintenance documents with the USPTO to keep your trademark in force.
Do I Need a Trademark Professional to Help Me?
You don’t need a lawyer to register a trademark, but there are some reasons you might want one.
- A trademark attorney can advise you on whether your phrase is distinctive enough to be eligible for trademark protection.
- A lawyer can conduct a trademark search and evaluate whether your phrase is likely to be confused with an existing trademark.
- The trademark application can be confusing, especially when it comes to identifying types of goods or services. It can be helpful to have your application prepared by someone who has experience, especially since the filing fee is nonrefundable if your application is denied.
Trademarking a phrase that you use in your business is a good way to protect your brand and make sure your competitors don’t use similar phrases. The process isn’t difficult, but it’s important to follow directions, complete your application carefully and respond promptly to any communications from the trademark office.