How to Trademark a Phrase | The Importance of Protecting Your Brand's Slogan - Drishti Law

Understanding the true worth of your brand slogan starts with acknowledging the necessity of trademark registration. By registering your unique slogan, you assert your legal rights, preventing others from utilizing it and diluting your brand’s reputation. This optimized guide unpacks the vital elements of trademarking your slogan and offers insights into the trademark application process.

Trademark 101

A registered trademark at the USPTO gives the trademark owner exclusive rights to use a distinctive word, phrase/slogan, logo, or design to identify and distinguish goods or services. Although your trademark, be it the name, slogan, or any other source identifier, already has common law trademark rights upon its first use in the marketplace. To learn more about the basics of trademarks, please visit this blog.

Trademarks play a key role in brand identity development, where consumers can separate your product or service from the rest of the marketplace. Before you file a trademark application for your slogan, it’s paramount to ensure it’s unique, distinctive, not already utilized by another business/brand, and not a common phrase. A comprehensive trademark search with the assistance of a trademark attorney can streamline the trademark application process and heighten the likelihood of successfully obtaining a registered trademark for your slogan.

Conducting a Thorough Trademark Search

To ensure the federal trademark registration process goes over smoothly, conducting a comprehensive trademark search is very important. The search is conducted to determine if your proposed mark/slogan is similar or identical to a common law trademark holder with an earlier priority date or a registered trademark.

A knockout search can be done through publicly available databases and the trademark electronic search system (TESS), the USPTO database. Additionally, with the assistance of a trademark lawyer, you can conduct a comprehensive search and analysis. A trademark search prevents future office actions, Cease & desist letters, opposition or cancellation proceedings, and more.

Submitting a Trademark Application to the United States Patent and Trademark Office (USPTO)

If the comprehensive search reveals no conflicting marks, your trademark application is ready to be filed at the United States Patent and Trademark Office (USPTO). The USPTO website provides an application system known as TEAS. The trademark application form requires specific information about your slogan, its filing basis, and the class of goods or services it will be connected with.

It is important to properly fill out the required information to avoid any future refusals through an office action from the examining attorney at the trademark office. Following the submission, it undergoes a review process. The current processing time for a trademark filing can be found here.

If approved, the slogan will be published in the official gazette, where third parties with conflicting marks can oppose the registration of your application. If no opposition is received within 30 days of publication on the official gazette, then you’ll receive federal trademark registration, offering legal protection for your slogan and safeguarding your brand’s reputation.

Enforcing and Monitoring Your Trademark

As trademark owners, monitoring and enforcing your trademarked phrase to protect your brand identity becomes essential. Trademark protection for your portfolio includes being on alert for any unauthorized use of your slogan or similar phrases by competitors or other businesses. With the assistance of a trademark attorney, you can monitor online platforms, social media, and other channels to ensure your motto isn’t being used without your consent.

Trademark infringement should not be ignored, and enforcing your trademark rights involve dispatching cease-and-desist letters, initiating federal legal proceedings, or other appropriate legal measures. Active monitoring and enforcement of your trademark helps maintain your slogan’s uniqueness and averts others from diluting your brand’s identity.

Learning from Successful Brands: The Power of a Trademarked Slogan

An examination of successful brands reveals the transformative potential of a unique, trademarked slogan. A powerful slogan becomes embedded in everyday speech, augmenting brand recognition and reinforcing the brand’s reputation. Let’s look at some notable examples.

Nike: “Just Do It“: Nike’s famous slogan, “Just Do It,” is more than a catchy phrase; it’s a trademarked slogan that has contributed significantly to the brand’s global success. Crafted to inspire and resonate with their target audience, this slogan communicates the brand’s ethos and has become synonymous with the Nike brand, distinguishing it in a highly competitive market.

McDonald’s: “I’m Lovin’ It“: Registered as a trademark, McDonald’s “I’m Lovin’ It” slogan instantly identifies the brand, bridging language barriers with its rhythmic charm. This slogan communicates customer satisfaction and promotes the brand’s dedication to quality service.

Apple: “Think Different“: A perfect illustration of how a unique slogan can encapsulate a brand’s mission and ethos, Apple’s “Think Different” slogan is a trademarked phrase that underlines the company’s commitment to innovation. It resonates with their target audience – individuals who seek to break the mold and appreciate cutting-edge technology.

Each of these brands understood the importance of trademarking their slogans and going through the trademark registration process to secure their unique phrases. This has enabled them to legally protect their slogans and build a distinctive brand identity that resonates with consumers and stands out in the market.

As these examples illustrate, a strong, unique slogan can play a vital role in building brand recognition and maintaining unique brand identity in a competitive marketplace. As a business/brand owner, the importance of trademark protection for your slogan and enforcing your trademark rights is evident. A unique phrase sets you apart from competitors and evokes a quality that is attributable to you through the slogan.

How Long Will Trademark Protection Last?

Trademark protection is not a fleeting privilege. Once your trademark is officially registered with the United States Patent and Trademark Office (USPTO), it can last indefinitely as long as you adhere to certain requirements.

A U.S. trademark registration is initially valid for ten years. However, to maintain your trademark registration, you must file maintenance documents to demonstrate that your mark is still in use in commerce. These critical post-registration maintenance filings are covered in more detail here.

It’s crucial to keep track of these deadlines since failing to file these maintenance documents in a timely manner can result in the cancellation of your trademark registration. If you continue to use your trademark and file the necessary documents, your trademark can provide indefinite protection for your brand’s slogan.

Can I Trademark a Phrase for Different Categories of Goods or Services?

Absolutely. When you apply for a trademark, you’ll need to identify the specific goods or services with which the mark will be used. These goods and services are categorized into different classes under the International Classification of Goods and Services. For example, clothing falls under Class 25, while downloadable software belongs to Class 9.

It is possible and often crucial to register your slogan in multiple categories. Nike, for instance, markets more than just footwear and has registered different trademarks in numerous classes for related goods and services. If your business provides products or services that fall under various categories, it may be wise to safeguard your slogan across those relevant classes. But keep in mind that the USPTO filing fees are based on per class, so registering your trademark in multiple classes will raise the expenses.

Protect Your Brand Identity.

Trademarking your slogan is an essential step in protecting your brand identity and developing your intellectual property portfolio. Your slogan is a valuable asset that sets your brand apart from competitors and helps consumers recognize and remember your products or services. Trademark registration provides legal protection and allows you to act against anyone infringing on your trademark rights. Don’t underestimate the importance of trademarking your slogan to safeguard your brand identity and maintain your competitive edge in the market.

Do I Need an Attorney to File a Trademark Application?

While it is not strictly required to hire an attorney to file a trademark application, it is highly recommended. Navigating the trademark application process can be complex and nuanced, with various legal requirements and potential pitfalls. An error in your application can lead to delays, extra costs, and even outright rejection of your trademark application.

Trademark lawyers can be of assistance during trademark counseling and application to enhance the brand identity. They can provide valuable guidance throughout the process, from conducting a comprehensive trademark search, understanding relevant laws, selecting the appropriate class for filing, and responding to any office actions by the USPTO examining attorney, to maintaining your registered trademarks.

Furthermore, beginning in 2019, the USPTO requires foreign-domiciled trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings to be represented by an attorney licensed to practice law in the United States. This rule was established to increase customer compliance with U.S. trademark law and USPTO regulations.

In summary, while hiring an attorney is not a strict requirement for U.S. applicants, the value of their expertise and guidance in the trademark application process can be a worthy investment to protect your brand’s slogan.