Monday, August 23, 2021

How to Trademark a Phrase

From Nike to Coca-Cola to De Beers, renowned brands have equally recognizable catchphrases.

And you would be right to assume that these slogans are trademarked.

The good news is that you don’t have to be a multinational company to trademark a phrase or slogan.

Admittedly, the process can be time-consuming and bureaucratic. But it’s possible to trademark your phrase if you know the right steps to take. 

In this post, I’ll highlight the easiest way to trademark a phrase, step-by-step.

The Easy Parts of Trademarking a Phrase

Many people are surprised to find that you don’t necessarily need to go through the tedious process of registering a trademark. Common-law trademarking gives you legal rights to a phrase without needing to file a single document with a government agency.

Under this trademark law, you only need to regularly use your phrase or tagline in your business to be able to consider it trademarked. You’ll also be able to enforce this trademark in the geographical area you operate in. Furthermore, you don’t need to pay anything to obtain your common-law trademark. There are no filing fees, registration fees, or any type of fees associated with this mark. 

In some cases, you may even be able to continue using your trademark in your geographical area even if another business registers the phrase with the federal government.  Additionally, you’ll be able to use the ™ symbol after your phrase. This symbol indicates to other businesses that you hold common-law trademark rights for the phrase.

The catch is that you have to be the first business in your industry and geographical area to use the phrase in order for this rule to work for you, and you will need a proven first-use date for your phrase. This date is evidence that you used the trademarked phrase before anyone else did.

For example, if you’re using your trademark phrase in Los Angeles, it’s only protected in your geographical location. Anyone can use the exact same phrase in San Francisco, or anywhere else in California for that matter, not to mention in any other state. Additionally, you’ll be solely responsible for enforcing your trademark–no one else will do it for you. 

But common-law trademarking is an easy way to avoid the bureaucratic process of trademark registration while still laying claim to the phrase you want to use. 

The Difficult Parts of Trademarking a Phrase

A federal trademark offers far more protection. But, this process can be long and complicated. The process of trademarking your phrase can take up to eight months. There is also no guarantee that your trademark will be granted.

Additionally, registering a trademark can be expensive. This is because the federal trademark only protects you from other businesses in your class. You may need to file a trademark application for each business class you want to be covered. With the cost of each filing ranging from $225 to $400, the total price can soon add up.

Furthermore, the U.S. Patent and Trademark Office (USPTO) has stringent and often confusing rules and regulations. Understanding the regulations may require a legal and trademark background. Given that your application fee is non-refundable, you’ll need to be careful to meet all the rules.

In short, the entire process is time-consuming, confusing, expensive, and offers no guarantees of success. But online legal services like LegalZoom can help to make the registration process straightforward. In addition, LegalZoom offers two options for filing your federal trademark.

The first option is a self-service-style offering. LegalZoom will provide you with all the information and resources you need to complete the trademark application. The legal service provider also gives you access to a basic search to see if your mark is already taken. Finally, LegalZoom lawyers will complete, proofread, and file your application on your behalf.

The second option is more hands-off. You’ll only need to answer a few questions about your trademark. Then, an attorney will take over the entire process. After that, you only need to wait for the outcome of the application.

Below are the steps you need to take to trademark a phrase:

Step 1 – Choose the Phrase You Want To Trademark

The first step in the process is to choose the phrase you want to trademark. It helps if you already have a phrase in mind. Either way, you’ll need to pay special attention to this stage. A strong trademark will provide you with complete protection from trademark infringement. It will also ensure that you can file your trademark successfully.

Go Through the USPTO Trademark Requirements

You may want to familiarize yourself with the USPTO requirements. The U.S. Patent and Trademark Office is responsible for registering trademarks. As such, this federal agency has set out rules for words, symbols, and phrases that can and cannot be trademarked.

You can refer to the USPTO website to learn the trademark basics. Some of the basic rules you’ll need to adhere to include:

  • The phrase has to be original and not already on file. You cannot register a trademark that’s already registered or pending.
  • You can only use your trademark phrase for commercial purposes. This means that you must use the phrase in connection with goods or services you are selling.  You cannot trademark a phrase that you like so that other people can’t use it, but then never use it yourself.
  • Your trademark shouldn’t merely describe goods or services. Instead, the trademark should identify your business as the source of goods or services. For example, you cannot register the trademark phrase “Creamiest Yogurt in Town.” This phrase merely describes the kind of goods you are selling and is therefore unacceptable.
  • You cannot trademark common or cliche phrases used in everyday speech. Examples of such phrases may include “Break a leg” or “Bite the bullet.”

Come Up With a List of Possible Trademarks

A strong trademark phrase is invaluable to marketing and promoting products and services. Think of iconic phrases like “Where’s the Beef?” from Wendy’s or “Whazzup?” popularized by Budweiser. You can enjoy immense brand recognition by trademarking and popularizing your catchphrase or tagline.

If you haven’t already, create a list of possible catchphrases for your business. Some of the things to consider when creating your list include:

  • Your unique selling proposition
  • Your target market
  • What your business stands for
  • The feelings you want your slogan to elicit

Additionally, you might want to consider a timeless slogan. For example, “Can You Hear Me Now?” was an excellent catchphrase for Verizon. But with the advancements in cell phone and network technology, the phrase is outdated. You can also find free slogan makers to help you come up with a catchphrase from scratch.

Finally, choose the phrase you are happy with. It pays to have alternative phrases, just in case your first pick falls through.

Step 2 – Choose an Online Legal Service

You don’t have to spend too much time looking for a trademark attorney. Online legal services are convenient. Moreover, these services are staffed with expert and experienced trademark attorneys.

Sign Up With LegalZoom

Once again, LegalZoom offers two pricing tiers. The do-it-yourself plan costs $249 exclusive of federal filing fees. The attorney-lead plan is a little pricier at $599, exclusive of federal filing fees. I highly recommend the latter option if you have the budget for it.

With this plan, a trademark attorney takes care of everything you need to trademark your phrase. This includes researching the words and filing the appropriate paperwork. Additionally, LegalZoom will cover the $599 fee for a second trademark if your mark gets rejected.

The rest of this guide covers how to register your trademark with LegalZoom manually. If you choose the second LegalZoom plan, you only need to submit your phrase and details about your business, and the legal service will take care of the rest. Even so, it’s still worth reading through the rest of the guide to find out what goes into trademarking a phrase.

Step 3 – Do Your Due Diligence

You’ll be prompted to enter your trademark phrase as soon as you sign up for your DIY LegalZoom trademark registration plan. But there are a few things to sort out before formally starting the trademark application process.

These steps will help ensure that the application process goes smoothly. Any mistakes registering your trademark means you forfeit your application fee, so it’s worth paying particular attention to these steps.

Choose Your Product Class

The USPTO has 45 classes for products and services. For example, Class 1 covers chemical products used in industries such as agriculture, science, and photography. Your trademark only protects your phrase in your product class. For example, if you’re in the cosmetics business, there’s nothing to stop a computer and software company from using your trademark.

You may need to register your trademark in two or more classes if you sell different types of products. For example, if you sell motorcycles and motorcycle clothes, these products will fall into distinct categories.

You can learn more about the USPTO product classes here.    

LegalZoom charges an extra $410 for each additional product class. This fee also includes the USPTO filing fee. Either way, you’ll have to pay a filing fee to the USPTO for each extra product class.

Click Save and Continue to proceed to the next step.

Collect Proof of Using Your Trademark

You can’t just trademark a phrase that you like but don’t actually use. You’ll need to submit proof that you have used the phrase to sell your products or services. The LegalZoom application requires you to enter a specific date when you started using your phrase.

You’ll also need to submit proof of this use to the USPTO along with your application. Think about product packaging, marketing materials, product labels, or websites where you have used the phrase you need to trademark.

Conduct a Trademark Name Search

A USPTO examiner performs trademark searches for all applications. If there is an existing or pending application like yours, your request may be denied. So, you’ll need to make sure that the trademark doesn’t exist.

Your LegalZoom plan includes a basic USPTO direct-hit search. This means that LegalZoom will search the USPTO database to find similar trademarks as yours. If you want a more comprehensive search, you’ll need to pay extra.

Choose your search option to continue with your registration process. You can also search the USPTO database if you’re applying yourself. But, the search won’t include common-law trademarks. So, there’s no guarantee that your application will be successful.

Step 4 – File Your Application

The great thing about LegalZoom is you don’t have to worry about filing your application. The online service will take care of this for you regardless of your plan. Additionally, an attorney will look through your application to ensure that there are no inconsistencies. Errors and inconsistencies can delay your application process.

Review Your Application

If you’re applying yourself, it’s worth reviewing the document to make sure everything is correct. It’s also worth having a trademark attorney have a look at the application before you file it. Remember, it can take up to eight months to successfully trademark your phrase. You’ll also have to forfeit your filing fee if your application is successful.

So, take every measure to ensure that you have the correct details before filing your application.

File Your Application

Finally, you can file your application with the USPTO and pay the filing fee. Again, an attorney will take care of this process for you as soon as you make the payment. You’ll also get regular updates about the application process and any similar trademark applications that may come up during this period. 

Step 5 – Maintain Your Trademark

The only thing left is waiting for the outcome of the application. You’ll be notified as soon as it is successful or otherwise. If your application is successful, you can now use the ® symbol after your phrase.

Finally, you’ll need to maintain your trademark. Otherwise, you may have to repeat the entire process if your trademark expires.

File Trademark Maintenance Paperwork

You’ll need to file maintenance paperwork five years after the original trademark registration. You’ll then need to file the paperwork every ten years to maintain your trademark. 

from Quick Sprout