A common question asked is, how to trademark a phrase? To answer this question, one needs to first understand what a trademark is and is not.
A trademark is a source identifier – it is a word, symbol, logo or any other “device” (including smell and sound) that is used to notify the consumer that this product or service is manufactured or offered by a particular producer or service provider. Consequently, one cannot get a trademark for a phrase that is not (and will not) be used in connection with the sale of a specific good or service.
So, for example, one cannot obtain a trademark for a clever saying or design unless it is used in connection with the advertising or sale of goods or services.
Assuming you are using the phrase, word or logo in connection with a particular good or service, the next question becomes, is this mark protectable? Or put differently, is this registerable?
Generally speaking, trademarks which are descriptive or generic are afforded very little or no protection at all. A “generic” term is a term that describes the very product or service being sold. So, for example, I could not get approved for the term APPLE for the green apples I grow and sell. The term APPLE is the name of the very thing I am selling. A mark is descriptive if it describes a feature or ingredient of the product or service. If I sell an apple-smelling air freshener under the name APPLE, the term APPLE is descriptive of the product – namely, it describes the fact that my air freshener smells like apples.
Applying for a federal trademark which is deemed to be merely descriptive will likely result in an Office Action refusal (otherwise known as a 2(e) refusal). How to respond to a “merely descriptive” refusal depends largely on whether it is IN USE and the extent to which arguments may be made that the trademark in its totality is not merely descriptive.
How To Trademark A Phrase
When you’re considering how to trademark a phrase, careful thought should be given as to the relationship between the phrase or word and the product or service that is being sold under it. The more DISCONNECTED the phrase or word is from the product or service being sold under that trademark, the better the trademark. Selling computer hardware and software under the name APPLE is a good trademark because there is no readily apparent connection between the term APPLE and the computer hardware and software sold under it – APPLE does not describe any feature of the products.
Once you are satisfied that the phrase or word you seek to register is not descriptive or generic, the next issue that needs consideration is whether the proposed trademark is conflicting with other preexisting trademarks.
It is important to note that in the United States there are two types of trademarks. There are federal trademarks and common law trademarks. Federal trademarks are those that are filed and registered at the United States Patent and Trademark Office (the USPTO) and common law trademarks are those trademarks that have acquired recognition among the consuming public by virtue of extensive use of the trademark in the market (even without filing for federal protection).
To “clear” a trademark one should do a trademark search in both common law and federal trademarks, though the USPTO examiners will search only federal trademarks in their initial conflicts analysis.
Once a proposed trademark is searched and cleared, the next step (assuming federal registration is sought) is to file the trademark at the USPTO. The steps to trademark a phrase are the same regardless of the type of phrase.