How to Trademark a Slogan
How to Trademark a Slogan is part of our How to Trademark series.
Slogans can be a little different from other trademarks in that they’re not inherently brand identifiers. This can make obtaining trademark protection for sayings, mottos, catchphrases and other slogan types a difficult endeavor. Fortunately, it is possible to claim rights over these terms.
Before you go down the road of how to trademark a slogan, you should first ensure that it’s not already in use. The United States Patent and Trademark Office (USPTO) receives more than 400,000 trademark applications per year.
While we recommend that you use a trademark attorney to do a trademark search, the USPTO’s website allows you to search for similar slogans on your own. A trademark clearance search is an essential step in gaining trademark protection for a slogan. Once this process is complete, you can submit your application knowing that trademark infringement is much less unlikely.
How to Trademark a Slogan or Phrase
An essential step in how to trademark a slogan or phrase is recognizing whether it’s even trademarkable. There are several considerations that go into whether you can obtain protection over an slogan, but it typically comes down to whether it’s used to designate the source of a product or service. Slogans that are merely informational or descriptive typically won’t be granted trademark registration.
Nike’s “Just Do It” slogan is an example of an inherently creative or distinctive slogan. The phrase “Where’s the Beef?”, utilized in Wendy’s marketing materials, showcases an instance where secondary meaning has developed. Although it would typically be seen as informational or descriptive, it’s continued use allowed the company to prove that consumers associated the phrase with its brand.
If you feel your slogan or phrase meets these qualifications, you can submit a trademark registration application directly through the Trademark Electronic Application System (TEAS). After submission, you can expect the following to take place:
- A filing receipt is received almost immediately after submission.
- An examining trademark attorney will receive your application within four months.
- The examining attorney will issue either an office action or notice of publication. If approved, the trademark is published in Official Gazette.
- Third parties have 30 days to submit a trademark opposition if they oppose registration of your slogan.
- Third parties can also request extensions to file oppositions.
- The opposition could end up in front of the Trademark Trial and Appeal Board (TTAB).
- If no opposition is filed, registration notice typically comes within four months.
Types of Trademarks
There are a variety of different types of trademarks that your slogan can fall under. These types can be related to the form of business you run to the strength of your chosen slogan.
Generic and Merely Descriptive Trademarks
Any trademark that’s considered generic cannot be registered with the USPTO. Generic trademarks designate or describe the goods or services rather than distinguish their source. Check out our Descriptive and Generic Trademark page for more information.
Suggestive and Arbitrary Slogans
Suggestive trademarks are one of the stronger types of trademarks. A suggestive slogan would be distinctive without being descriptive. Rather than describing a product or brand, it would suggest or reference it. Consumers must use their imaginations to create a link between the brand and slogan.
Even if a phrase or slogan has a well-known meaning, it can be trademarked for a specific brand if it’s arbitrary to the company itself. Nike’s “Just Do It” is a good example of an arbitrary slogan since those words don’t really have much to do with shoes. You can find more information on these types of trademarks on our Suggestive, Arbitrary and Fanciful Trademarks page.
The only substantial difference between trademarks and service marks is the offering provided by the business. If a slogan is attached to a company that sells products, it receives trademark protection. If the brand offers a service, however, the granted protection is known more specifically as a service mark. This could include anything from legal services to lawncare.
The type of trademark your slogan is can also affect the trademark symbol used prior to registration. The federally registered trademark symbol – an encircled R (®) – can be used on slogans regardless of whether a company offers goods or services. Prior to federal registration, a superscript “TM” (™) is used for goods or services. Conversely, a superscript “SM” (℠) can be used for companies that offer services.
It’s important to not use the federal trademark symbol prior to being granted registration. Regardless of your slogan’s originality or use in commerce, preemptively using the symbol can result in your application being denied.
Trademarks vs Patents
Patent protection excludes others from making, selling, using or importing novel inventions. While processes and mechanisms can be patented, mere words cannot. There is never an instance when you’d be able to patent a slogan or phrase.
Trademarks vs Copyrights
Many people have more difficulty when distinguishing trademarks from copyrights. Copyright registration protects original works of authorship, and this can include literary works. This form of protection, however, doesn’t extend to short phrases like slogan. A standalone slogan or phrase will always fall under trademark law.
Common Law Trademarks
You can use a slogan without ever seeking federal trademark registration. This is known as a common law trademark. While not its own separate form of intellectual property, there are important distinctions between common law and federally registered trademarks. You can see our common law trademark page for more information.
The USPTO has trademark classes to distinguish trademarks across industries. Whenever you submit a slogan for registration consideration, you must list at least one trademark class.
There are 45 classes that your slogan may fall under, and this will depend entirely upon the type of product or service you’re offering. If you sell diamond engagement rings, for instance, you’ll need to apply as Class 14 (Jewelry Products). If you build homes, your registration will be under Class 37 (Construction and Repair Services). For a full listing of trademark classes and help choosing one, the USPTO makes their Trademark ID Manual available.
While only one trademark class must be listed in your application, you should file under multiple classes if appropriate. If you don’t, it is possible that another company will be granted your trademark for goods or services in other classes determined to not be confusingly similar to yours.
Trademarking a slogan comes with the same fees as other trademarks. The cost will range from $225 to $400 dependent on the TEAS form you use. The price is inversely related to strictness of the requirements you must meet. You’ll see the lowest fees with the TEAS Plus application which is $225 per class.
If you’re trademarking a slogan based on intent to use, you’ll have to submit a Statement of Use along with a filing fee of $100 per class. Many of these fees are contingent on using the online electronic filing system. This is by far the easiest and quickest way to trademark a slogan for your brand.
Our fee for a trademark search is $300 and our fee for a trademark application is $575 which includes our time for basic follow up through registration.
Trademark Use in Commerce
Knowing how to trademark a slogan means nothing if the slogan isn’t used in commerce. U.S. law defines “use in commerce” as a bona fide use of the trademark – not simply to reserve a right in the trademark – but in the ordinary course of trade. This can include affixing labels to products that are transported or sold in commerce. For service marks, this can be proven by showing the trademark in use advertising the services.
Intent to Use Trademark
Although commercial use is necessary before you can register the trademark for a slogan, this doesn’t mean you can’t preemptively file an application. Intent to use trademarks go through the same process as applications based on actual use. Instead of receiving a registration notice, though, you’ll be sent a Notice of Allowance once the opposition period has ended.
A sworn statement saying you intend to use the trademark in commerce is sufficient for your initial application. Once you’ve received the Notice of Allowance, you’ll then need to submit evidence of commercial use when it becomes available. This must be done within six months unless you file for an extension. Extension requests are $125 per class.
You can also file an Amendment to Allege Use prior to publication in the Official Gazette. Once publication has occurred, you must wait for your Notice of Allowance before submitting specimens.
Statement of Use
A statement of use is what you’ll need to file once your slogan has been used commercially. You must include a fee of $100 per class when submitting this statement. This is your opportunity to provide evidence of commercial use. If accepted, your trademark will register.
Trademark renewals must be submitted throughout the life of your slogan. The first renewal must be submitted five to six years after registration. Your second renewal is due nine to ten years after registration. Maintenance documents need only be submitted every ten years after this point.
If you don’t file renewal documents in a timely manner or fail to respond to oppositions or office actions, your trademark will be considered abandoned. This means your slogan can be registered by anyone and even registered b a third party.
If your slogan becomes a dead trademark, you’ll have to reapply. Not only will you lose your ability to protect the trademark nationally, but your brand could suffer from losing an established identifier.
How to Trademark a Slogan for a Shirt
There are specific requirements to trademark a slogan for a shirt. Using your slogan across the front of a t-shirt typically will not be accepted as a specimen of use by the trademark office. This is also true for other promotional items. Instead, for apparel, the slogan must be shown on a label or hang tag. For promotional items, the slogan must be shown on the product or packaging in a way that it designates the source of goods.
Just because your slogan is trademarked in America doesn’t mean it’s protected overseas. Thanks to the Nice Agreement, which the U.S. joined in 1973, your registration can serve as a basis for filing in foreign countries. This treaty standardized many of the rules related to international trademarks.
The process of trademarking a slogan in regions outside of the United States will vary by country but we typically use the Madrid Protocol whenever possible.
If you have questions related to trademarking a slogan, please contact us.