Steps To Trademark A Phrase In The US

The following are the general steps to trademark a phrase. The first thing to recognize when you trademark a phrase is that you cannot protect a phrase in a vacuum. What this means is that to protect your trademark, the phrase must be used in connection with the advertising of some product or service you are offering for sale. If you come up with a clever saying you want to protect you will need to specify in your application the particular product or service that you are selling under that brand/phrase.

You must also determine whether the phrase, as used, actually functions as a trademark from a legal perspective. A trademark is a mark, name, phrase, or symbol that serves to identify the source of the product or service. If the phrase in question does not function as a trademark, it will not be eligible for protection. Here is a good example of a phrase that does not function as a trademark:

Steps To Trademark A Phrase

While the phrase is clever, casual observers of the phrase on the front of the shirt would not assume that the phrase is the brand name that identifies the manufacturer of the shirt. Instead, they would assume that the shirt is a Hanes shirt (for example) that features a clever phrase on the front. The USPTO calls this “ornamental use.” The placement of a phrase and how it is used determines whether the trademark phrase functions as a trademark for registration purposes.

If you want to trademark a phase, becoming familiar with the distinction between true trademark use and ornamental use is critical. Once you are satisfied that your phrase functions as a trademark, the next step is to run trademark clearance searches to ensure that the phase you are looking to trademark is available at the Trademark Office. This is important for several reasons. First, the USPTO examiner will run her own searches and if a conflict is found, your application will be preliminarily refused with an Office Action. Second, before you start investing in your phrase you will want to avoid another party challenging your trademark or suing you for trademark infringement.

Assuming the trademark searches produce no concerning results, the next step is to work on your description of products or services. The USPTO breaks up all goods and services into 45 International Classes. Just to give a few examples: clothing falls within Class 25, business services fall under Class 35 and entertainment services are covered by Class 41. Reviewing the proper classification of your products or services will save you time when filing the trademark or when discussing your application with an attorney.

Finally, the phrase is filed with the USPTO. Once the phrase is filed with the USPTO, it takes between 3 and 4 months for the assigned examiner to review your phase trademark application. The examiner will begin with reviewing the trademark, description of products or services, and if you submitted a specimen (the proof of use) of the trademark, the examiner will review that to make sure that the phrase is being used properly as a trademark (and not merely as ornamental use). The USPTO examiner will then run conflict searches to determine whether there are any already existing trademarks which are confusingly similar to your proposed phrase mark.