How to Trademark a Phrase
How to Trademark a Phrase is part of our How to Trademark series.
In this page we discuss how to trademark a phrase. While we also discuss how to copyright a phrase and how to patent a phrase, generally trademark protection applies here instead of copyright protection or patent protection.
How to Trademark a Phrase or Slogan
The process of filing and receiving a trademark for a phrase can be broken down into the following 7 steps:
Select the Trademark
For the best chance of having your phrase approved as a trademark, you should choose as unique a phrase as possible which will provide you with the strongest trademark. The absolute strongest type of trademark is a fanciful trademark. A fanciful trademark is a phrase that does not already exist in the English language. Instead, it is made up solely to function as a trademark. For example, Exxon and Polaroid are examples fanciful names that had no meaning prior to their use as trademarks. These types of trademarks are inherently distinctive and, thus, easier to protect.
Down one notch on the strength scale is an arbitrary trademark. Though not completely made up, an arbitrary trademark has no relation to the goods or services at issue. Apple for phones and computers is an example. A suggestive trademark can also be a good choice, while a descriptive trademark usually is not. Lastly, generic trademarks are never a good choice because they cannot be protected.
In addition to choosing a specific phrase, you will also need to consider which goods and services your trademark will apply to because this is an essential element of your trademark filing.
Conduct a Trademark Search
Having a trademark attorney do a trademark search is probably the most important step in trademarking a phrase. Skipping a professional search can lead to trademark infringement issues and thus can cost you lots of time and money down the road. We do a $300 flat fee trademark search in which we search the USPTO database in addition to business names, domain names, and a common law search. While you might try to do a knockout search on your own, only an experienced trademark lawyer should do a trademark search.
Prepare Your Application
You will need to prepare an official trademark application to the USPTO. Basic information required includes the trademark being applied for, the goods or services at issue, and the trademark owner’s name and address. You have two options regarding the basis of your trademark application for a phrase.
The first is “use in commerce.” This means that you have already used the phrase on goods or services in the marketplace.
The second option is the “intent to use” basis, meaning that you have not yet used the phrase on your products or services, but you have a bonafide intent to do so. At a minimum, this means that you have some written plans to sue the phrase as a trademark.
Then, you’ll submit your application to the USPTO, along with your application fee. You must be very thorough in your application to be sure that all information is complete and accurate. Any errors on your trademark application can lead to a processing delay at best. Some errors will lead to a total rejection of your trademark application and a forfeiture of your government filing fee.
Monitor the Application Status
You should monitor your application to be sure that it is progressing and is not opposed by a third party. You can monitor your application through the Trademark Status and Document Retrieval system. It is important to monitor the progress of your application so you are aware of any problems and to be sure that you are not missing any deadlines which can lead to the abandonment of your application.
Work with the USPTO Examining Attorney and Respond to any Office Actions
About four months after filing, an examining attorney will review your application for any errors and to be sure that your application complies with all relevant laws. They review the written application, your drawing and specimen to be sure that they match and are correct, and all supplemental information.
The examining attorney will be sure that your trademark is not merely descriptive or generic and will check to be sure it is not likely to be confused with any prior pending or registered trademark. This process may take several months.
If the examining attorney determines that your trademark should not be registered, they will issue an office action letter that explains substantive reasons for this refusal, including any errors in the application process. You will have an opportunity to respond to the office action within six months. If you fail to properly respond to the office action, your application will be denied, your trademark will abandon, and your government filing fee will be forfeited.
File a Statement of Use
If you filed your trademark application on an intent to use basis, a Notice of Allowance will issue. From the date of issuance you will have six months to file a statement of use or to request an extension of time.
A statement of use must meet stringent filing requirements and will be reviewed by your examining attorney. If the statement of use is improper, the examining attorney will issue an office action which must be properly replied to or registration will be denied and the trademark application will abandon.
The Trademark Registers
If you overcome all objections, or if you did not receive an office action, the examining attorney will approve the trademark application. It will then be published in the Official Gazette which is a USPTO publication. Any person or business that believes that your phrase would damage their business has 30 days from the publication date to oppose your trademark application.
It may take about three months from the time you receive the notice of publication until you receive a your registration.
Trademark Registration Timeline
The timeline for getting a phrase registered may include the following approximate timelines:
- Application is filed
- USPTO reviews application: Four months
- USPTO approves and publishes trademark: Three months
- Or, if USPTO issues office action and you file a response: add two months
- USPTO approves and publishes trademark – Three months,
- Or, if USPTO issues final office action and you file a response: add two months
- USPTO Issues a Notice of Allowance and you file a Statement of Use – add two months
- USPTO issues a trademark registration: Three months
How to Copyright a Phrase
Short phrases generally cannot be protected by copyright. Instead, short phrases should be protected by trademark.
How to Patent a Phrase
Patents protect novel inventions. Thus, it is not possible to patent a phrase. Instead, trademark protection would apply.
How to Trademark a Phrase for a T Shirt
The steps above should be followed to trademark a phrase for a shirt. Just remember that the specimen of use submitted with the application but show the trademark used on the label or a hang tag, not just on the front of the shirt.
Maintaining Your Trademark
In order to enforce your trademark against any infringers, you must actively monitor and maintain it. First, you have a duty to police your trademark to be sure that others are not using it without your permission. A failure to police your trademark can lead to the loss of trademark rights.
Secondly, you must maintain the trademark with the USPTO. This requires that you to file specific maintenance documents which show that you are actively using your trademark and correcting any information as necessary. The trademark must be renewed between the 5th and 6th year after registration, and every 10 years after registration. If you do not file these documents in a timely manner, your trademark can be cancelled and will be free for others to register. To be sure that you receive all notices related to your trademark, including any notices that you might receive in relation to a trademark cancellation, you should be sure to update your email and mailing address if they change.
Mandour & Associates – Trademark Lawyers
We have 20+ years of experience filing trademark applications and handling trademark infringement issues if they arise. If you would like us to handle the filing of your trademark application, we would be happy to assist.
For a free consultation, please feel free to contact us.