Trademark a Phrase

Trademarks are symbols, words, or combinations of words that are used to represent a product or a service. Registering a trademark allows the person who registered it to control how the “mark” is used, protect their brand, and prohibit others from using the mark to sell their own products. If you have a unique phrase or slogan for a business, you will want to trademark it to protect its usage.

Steps

Searching for a Phrase

1. Write Slogans. You can't trademark a phrase that doesn't exist. Know the brand or idea you are trying to promote. Keep your slogan short, memorable, and appropriate for your audience.
   • You can use a common word or phrase, but be aware that to obtain a trademark, you need to show that the phrase has a “secondary meaning” that makes your use different from the usual meaning of the phrase. You will also need to show how that secondary meaning is connected with your product or service.
   • You should also be able to describe the representation, or how your phrase will look. If you want to add any specific design element to your slogan, that becomes part of the trademark.
2. Generate search terms. Using your phrase, generate a list of trademark search terms. Choose search terms that match your phrase exactly, but also use those that are similar. For example, if your phrase is “The Bestestestest Chicken of Your Life,” you may choose search terms that vary the spelling of the word ‘best’ or that add words to the beginning or end of the phrase, like “We Serve the Best Chicken of Your Life.”
   • Keep in mind that the goal of the search is to determine whether the phrase that you wish to trademark, or anything very similar to that phrase, is already being used.
3. Type your search into a search engine. Repeat this for each of your search terms and take note of the results of each of your search terms. Pay special attention to those results that are very similar or identical to your phrase. You may wish to print out your results to keep track of any similar marks.
   • Use several different search engines (Ask, Bing, Google, Yahoo) to make sure you cover what is out there as fully as possible. They will probably give similar results, but it's best to be thorough in your search.
4. Keep track of the type of product or service that your search results represent. Note any mark that is similar to the way that you intend to use your phrase and represents a similar product or service to your company. For example, if your phrase is “The Bestestestest Chicken of Your Life,” and you use the phrase in conjunction with a fried chicken restaurant, take note of any restaurant or food services company using a similar phrase.
5. Conduct a Trademark Electronic Search System (“TESS”) search. Search for similar terms just as you did in other search engines. Take notes of your searches in TESS as you did in the previous step. TESS uses the US Patent and Trademark Office's (USPTO) searchable, online database of registered trademarks to see if anyone has registered your phrase. TESS is available through the USPTO’s website ([1]).
6. Consider hiring a Trademark Attorney. If your searching finds someone else using a phrase similar to yours, and you still want to use the phrase yourself, a trademark attorney can help you with the rest of the process. If you find no other company using your name as their own mark, you may still want to hire a trademark attorney to ensure that your search was accurate.

Filing a Trademark Application

1. Know your basis for filing. The USPTO will ask what you intend to use the phrase for, and when you intend to start using it. Depending on the answer, your basis will either be "use in commerce" or "intent to use."
   • "Use in commerce" basis involves slogans already in use. You will need to provide the date that you began using the phrase and a clear example of you using of the phrase in a commercial setting.
   • "Intent to use" basis is for phrases that you intend to use in the future, but have not yet used. This basis requires an additional form and fee before registering.
2. Complete an online application form. Use the USPTO's Trademark Electronic Application System (TEAS). There are three different forms, the TEAS Regular, TEAS Plus, and TEAS RF (Reduced Fee).
   • TEAS Plus applicants agree to file additional forms, which will ask about identification taken from the USPTO Trademark ID Manual, additional mark-related information, and a valid e-mail address for correspondence.
   • TEAS RF applicants agree to file additional forms and provide a valid e-mail for correspondence. If you file a TEAS RF application, but fail to meet the requirements, you will have to submit an additional $50 processing fee.
   • The USPTO website (http://www.uspto.gov/trademarks-application-process/filing-online/initial-application-forms) has sample PDFs to view. You should look at these before filing to make sure you have all the proper information. You cannot submit these PDFs, they are for reference only.
   • Pay the filing fee. The filing fee will be $225 (TEAS RF), $275 (TEAS Plus), or $325 (TEAS Regular) depending on the form you file. This fee is non-refundable.
   • Be sure to spell all parts of the phrase exactly as you intend to use the phrase. The examining attorney that reviews your application to determine if it is valid will only look for the exact spelling you provide on the form
   • Make a copy of all of your materials before you submit them and retain it for your records.
   • You will need to file a separate form for each individual phrase you wish to trademark.
3. Work with assigned USPTO examining attorney. Once you have met all the filing requirements, your application will get a serial number and be assigned to an examining attorney. The attorney will review your phrase to make sure it complies with all applicable laws, and search for conflicting remarks.
   • If there is a change to your application, the attorney will send written confirmation, called an "examiners amendment." Unless you disagree with the change, you don't need to respond.
   • If there are issues with your application, the attorney will send you a letter, either a priority action or office action. This letter should explain the issue and what you can do to resolve it. You will have 6 months to respond to a priority or office action.
   • For any of these letters, the USPTO recommends filing a response electronically through their website: http://www.uspto.gov/trademarks/teas/response_forms.jsp.
4. See your trademark published. Once the attorney has no objections, or you resolve all issues, your phrase will be published in the "Official Gazette," a weekly publication from the USPTO. At this point, anyone who wants to challenge your phrase has 30 days to do so. If they don't, or their opposition fails, you can move on to the next stage.
   • Any challenge will be heard by the Trademark Trial and Appeal Board, a part of the USPTO.
5. File statement of use form. Once your phrase gets past any challenges, the USPOT will send you a notice of allowance, meaning you can use your phrase commercially. You will have 6 months to file a statement of use form, or request a 6 month extension. From there, the USPOT will review your form, and issue letters as during the initial review.
   • Once your form is approved, the USPTO will issue you a registration. Congratulations, you have trademarked your phrase!
6. Maintain your registration. You must file additional documents to keep your registration current. If your registration lapses at any point, you will need to repeat the application process, so keep an eye on it.
   • Check the USPTO's Trademark Status and Document Retrieval (TSDR) system to track your registration status. The system is available through their website: http://tsdr.uspto.gov/
   • The USPTO says that you should make any necessary filings between the fifth and sixth year, and the ninth and tenth year following registration.

Warnings

• This process is not confidential. The USPTO is a government organization, so everything you submit during the application process is part of the public record. This is true even if you withdraw the application, or your application is rejected.
• Once your phrase is trademarked, you are responsible for making sure no one else uses it.

Related Articles

• Create Your Own Trademark
• Protect Your Trademark
• Trademark a Logo
• Defend Against Online Trademark Disputes

Sources and Citations

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