I. Introduction
Trademarks are essential assets for businesses. Trademarks are where all the goodwill (i.e., all the positive associations consumers have with a good or service) are stored. They are one of the ways a company can control its reputation in the marketplace. A trademark is a legal symbol that distinguishes a company’s products or services from those of its competitors, and it can include any distinctive matter such as words, phrases, symbols, or designs. Accordingly, a company can and should trademark a notable phrase or tagline.
Trademarking a phrase can also help protect a company’s investment in its brand. By securing the rights to a particular phrase, a company can prevent others from using a similar phrase for their benefit. This can prevent confusion in the marketplace, ensuring that customers know who they are dealing with and what they can expect from a particular product or service.
Additionally, if someone tries to use a trademarked phrase without permission, the company that owns the trademark can take legal action to stop it. This can include seeking damages for any harm caused to the company’s brand reputation or revenue.
In short, taking the step to trademark a phrase is essential for any company looking to protect its brand identity and establish itself in the marketplace. By securing the rights to a particular phrase, a company can ensure that its brand remains recognizable, protect its investment in its brand, and safeguard its intellectual property.
II. Conduct a Trademark Search to Trademark a Phrase
A. Why conducting a trademark search is important to Trademark a Phrase
Conducting a search is an important first step to trademark a phrase for a company. A search involves a thorough investigation of existing trademarks to determine if a proposed trademark is available for use or if it may infringe on the rights of another party. Here are some reasons why conducting a search is essential:
Avoiding infringement:
One of the primary reasons to conduct a search is to avoid infringing existing trademarks. If a trademark is similar to an existing trademark, there may be a risk of confusion among the relevant universe of consumers. This can lead to legal disputes, damage to a company’s reputation, and even financial loss. By conducting a search, companies can identify potential conflicts and avoid using a trademark that may be already in use.
Saving time and money:
Conducting a search before submitting a trademark application to the United States Patent and Trademark Office can save time and money. If a trademark application is rejected because it is likely to be confused with a prior registered mark or pending application, the applicant will have wasted time and money in the application process. By searching upfront, businesses can avoid these costs.
Building a strong brand:
A search can help businesses build a strong brand by identifying the number of other businesses that are using similar but not infringing trademarks. This can help companies establish a unique brand identity and avoid the risk of diluting their brand by using a similar trademark.
Protecting a company’s reputation:
Trademarks are valuable assets that can be used to protect a company’s reputation. Conducting a trademark search ensures that a can take legal action against anyone who tries to infringe on their trademark.
Conducting a trademark search is a crucial first step to trademark a phrase. It helps businesses avoid infringement, save time and money, build a strong brand, and protect their reputations.
B. How to conduct a trademark search to trademark a phrase
Here are the steps involved in conducting a trademark search:
Determine the scope of the search:
Before starting a trademark search, it’s important to determine the scope of the search. This includes identifying the goods or services that the trademark will cover.
Conduct a preliminary search:
Conducting a preliminary search can help identify potential conflicts and save time in the search process. A preliminary search can be conducted using the USPTO’s website specifically its online trademark databases such as the United States Patent and Trademark Office’s (USPTO) Trademark Electronic Search System (TESS). Additionally, a basic Internet search for any unregistered or common law trademarks should be conducted.
Conduct a comprehensive search:
Once a preliminary search has been completed, a comprehensive search may be conducted. A comprehensive search involves looking for unregistered or common law trademarks. In the United States, trademark rights are created through use, not registration. If a company plans to sell its goods and services in more than one state, then conducting a comprehensive search is prudent. A comprehensive search can be conducted using a variety of resources, including commercial trademark search services, professional search firms, and trademark attorneys.
Review the results:
After completing the search, it’s important to review the results carefully. Any potential conflicts should be analyzed in detail to determine whether the trademark is likely to infringe on existing trademarks. The review involves an analysis of the likelihood of confusion factors. The likelihood of confusion factors differ by judicial circuit, but 13 factors are applicable at the USPTO including the similarity of the marks, the similarity of the goods or services, and the strength of the existing trademarks.
Determine whether to proceed:
Based on the results of the search, it’s important to determine whether to proceed with the application process. If potential conflicts are identified, it may be necessary to revise the proposed trademark or abandon it altogether.
III. Understanding the different types of trademarks
Trademarks are unique symbols, designs, phrases, or words that identify and distinguish a company’s goods and services from those of others. There are several types of trademarks, each with its distinct characteristics and legal protections. Here are the most common types of trademarks:
Word marks:
Word marks are trademarks that consist of only words, letters, or numbers, without any design elements. Examples of famous word marks include Coca-Cola, Google, and Nike. Word marks are generally easier to register and provide the broadest protection.
Design marks:
Design marks are trademarks that consist of a design, symbol, or logo, without any words. Examples of famous design marks include the Apple logo and the McDonald’s golden arches. Design marks can be more challenging to register as they require a more distinctive design to be eligible for protection.
Composite marks:
Composite marks are trademarks that include both words and design elements. Examples of famous composite marks include the Pepsi logo and the FedEx logo. Composite marks offer strong protection because the combination of the design and the words creates a unique brand identity.
Sound marks:
Sound marks are trademarks that consist of a specific sound or melody. Examples of famous soundmarks include the NBC chimes and the Intel jingle. Sound marks are challenging to register and require a distinctive sound that can be easily associated with a particular brand.
Scent marks:
Scent marks are trademarks that consist of a particular scent or fragrance. Examples of famous scent marks include the floral scent of Verizon stores and the sweet aroma of Play-Doh. Scent marks are the most challenging to register and require strong proof of acquired distinctiveness.
Color marks:
Color marks are trademarks that consist of a specific color or combination of colors. Examples of famous color marks include the Tiffany blue and the UPS brown. Color marks are difficult to register and require a strong association between the color and the goods or services.
Understanding the different types of trademarks can help businesses select the appropriate type of trademark for their goods or services and ensure that their trademarks are adequately protected.
IV. Determine Eligibility for Trademark Protection to Trademark a Phrase
A phrase can be eligible for trademark protection if it meets certain requirements. These requirements include:
Distinctiveness:
To be eligible for trademark protection, a phrase must be distinctive, meaning it must be able to identify and distinguish a product or service from others. A distinctive phrase is not commonly used in the industry and is not merely descriptive of the product or service.
Non-generic:
A phrase cannot be registered as a trademark if it is generic or common in the industry. For example, the phrase “apple” cannot be trademarked for an apple because it is a generic term used to describe the product.
Not misleading:
A phrase cannot be registered as a trademark if it is likely to deceive or mislead consumers about the product or service’s origin, quality, or characteristics.
In use:
Trademark owners need to use the phrase in use in commerce to be eligible for trademark protection. This means that the trademark owner needs to use the phrase to identify and distinguish a product or service in the marketplace. A company can file an intent-to-use trademark application with the USPTO, but the mark will not register until the company submits a statement of use evidencing the use of the applied-for mark to the USPTO.
Not infringing:
A phrase cannot be registered as a trademark if it infringes on the rights of an existing trademark owner. This means that the phrase must be different enough from existing trademarks to avoid confusion among consumers.
Once a phrase meets these requirements, it may be eligible for legal protection. The trademark registration process involves filing an application with the appropriate government agency and undergoing a review process to ensure that the phrase meets all the requirements.
A. The distinction between generic and distinctive phrases
The distinction between generic and distinctive phrases is crucial in trademark law. Generic phrases are terms that describe an entire category of products or services and are not capable of distinguishing one product or service from another. In contrast, distinctive phrases are unique and capable of identifying and distinguishing a particular product or service from others in the marketplace.
Here are some examples to illustrate the difference:
- “Milk” to describe dairy milk products
- “Beer” to describe alcoholic beverages made from hops, barley, and water
- “Computer” to describe a machine that processes data
These phrases are generic because they are commonly used to describe an entire category of products or services. They cannot receive legal protection because they are essential to the industry and belong to the public domain.
- “Coca-Cola” to describe a particular brand of soft drink
- “Nike Just Do It” to describe a particular brand of athletic shoes and apparel
- “Got Milk?” to describe a particular advertising campaign for dairy milk products
These phrases are distinctive because they are unique and capable of identifying and distinguishing a particular product or service from others in the marketplace. They are eligible for trademark protection because they have acquired a secondary meaning by associating the phrase with a particular brand or company.
The distinction between generic and distinctive phrases is essential in trademark law because it determines whether a phrase is eligible for trademark protection. Generic phrases are not capable of distinguishing one product or service from another and belong to the public domain. Distinctive phrases are unique and capable of identifying and distinguishing a particular product or service from others in the marketplace, and therefore, eligible for trademark protection.
V. Prepare the Trademark Application
An application for a phrase must contain specific information to register it as a trademark and protect it from infringement. Here are the essential elements required in an application for a phrase:
Name and address of the applicant:
This information includes the name and address of the person or company applying for the trademark. It is important to identify the company or person that will use the trademark. Misidentifying the trademark owner can jeopardize the validity of the application.
Description of the phrase:
The application must include a clear and accurate description of the phrase, including any design elements or logos associated with it.
List of goods or services:
The application must specify the goods or services that the trademark will be used to identify and distinguish in the marketplace. The goods or services should be described in detail.
Basis for filing:
The application must state the legal basis for filing the trademark, such as actual use or intent to use.
Date of first use:
If claiming an in-use basis, the application must include the date on which the phrase was first used in commerce. This date is important because it establishes the priority of the mark over other similar marks. A mark is considered to be used in commerce if its use affects interstate commerce.
Specimen of the mark:
If claiming an in-use basis, the application must include a specimen of the mark, which is a sample of how the phrase is used in commerce. The specimen should show how the phrase is used to identify and distinguish the goods or services from others in the marketplace.
Filing fee:
The application must be accompanied by the appropriate filing fee. The USPTO filing fees are assessed according to the number of International Class numbers included in an application. Each International Class Number costs $250 if the application contains a goods or services description from the USPTO’s Acceptable Goods and Services Description Manual or $350 if a custom goods or services description is used.
Once the application for a phrase is submitted, it undergoes a review process by the USPTO to ensure that the mark meets all the requirements for registration.
VI. Choosing the appropriate trademark class
Choosing the appropriate trademark class is a crucial step in the application process. The trademark class system is used to categorize goods and services for trademark registration purposes. The system divides goods and services into 45 different classes, with classes 1-34 designated for goods and 35-45 designated for services. Here are the steps involved in choosing the appropriate trademark class:
Identify the goods or services:
The first step is to identify the specific goods or services that the trademark will be used to identify and distinguish. The applicant should be as specific as possible when describing the goods or services.
Determine the correct class or classes:
The next step is to determine the appropriate trademark class or classes for the identified goods or services. This can be done by consulting the Trademark Classifications guide provided by the World Intellectual Property Organization (WIPO) or other relevant trademark authorities. Each class corresponds to a specific category of goods or services, and the applicant should select the class that best matches the identified goods or services.
Consider related classes:
In some cases, it may be necessary to consider related classes when choosing the appropriate trademark class. This is because some goods or services may fall into multiple classes. For example, clothing falls under class 25, but hats and footwear fall under class 18. Therefore, an applicant who wants to register a trademark for a line of clothing, hats, and footwear will need to file applications in both classes 25 and 18.
Choosing the appropriate trademark class is an essential step in the application process. It is crucial to be as specific as possible when identifying the goods or services and to consult the relevant classification guide to select the appropriate class.
VII. The use of disclaimers in a trademark application
The United States Patent and Trademark Office examining attorney may require disclaimers of certain matters in a trademark application. Trademarks that contain descriptive or generic words may be required to disclaim this matter. In a trademark application, a disclaimer is a statement that acknowledges that the applicant does not claim exclusive rights to a particular word or phrase that is included in the trademark. Here is a detailed explanation of the use of disclaimers in trademark applications:
Purpose of disclaimers:
The purpose of a disclaimer is to clarify that the applicant is not claiming exclusive rights to a generic or descriptive word or phrase that is included in the trademark. Disclaimers ensure that the trademark registration is not overly broad and that other businesses can continue to use the disclaimed word or phrase in their own trademarks and marketing materials.
Examples of disclaimers:
Common disclaimers used in applications include phrases like “no claim is made to the exclusive right to use [insert word or phrase here] apart from the mark as shown,” or “applicant disclaims the right to exclusive use of [insert word or phrase here] apart from the mark as shown.” For example, if an applicant seeks to trademark the phrase “Healthy Foods” for a line of food products, the applicant may need to disclaim the word “foods” because it is a generic term.
Legal significance of disclaimers:
Disclaimers have legal significance in that they limit the scope of the trademark protection granted. By disclaiming a particular word or phrase, the applicant acknowledges that it is not entitled to exclusive use of that word or phrase apart from the mark shown. This means that other businesses can continue to use the disclaimed word or phrase in their own trademarks and marketing materials.
Importance of using disclaimers:
It is important to use disclaimers in trademark applications, particularly for trademarks that contain descriptive or generic words. Without a disclaimer, the trademark registration may be rejected by the trademark office or challenged by other businesses in the future. By using disclaimers, the applicant can clarify the scope of the trademark protection and avoid potential legal disputes.
An examining attorney may require disclaimers in trademark applications that contain descriptive or generic words. They clarify the scope of the trademark protection and ensure that the trademark registration is not overly broad.
VIII. Submit the Trademark Application to the USPTO
A. Explanation of the trademark application filing process
The trademark application filing process can be complex and time-consuming, but it is necessary for protecting a business’s brand and intellectual property. Here is a detailed explanation of the trademark application filing process:
Complete the trademark application:
The application can be completed online through the USPTO’s website. The application will require the following information.
Submit the trademark application:
After completing the trademark application, the applicant must submit it to the USPTO. If filing online, the applicant can apply electronically.
Wait for an examination:
After submitting the trademark application, an examining attorney at the USPTO will review it to ensure that it meets all requirements. The examination process can take several months. If the application is incomplete or contains errors, an examining attorney at the USPTO will issue an office action requesting additional information or corrections.
Respond to office actions:
If the USPTO issues an office action, the applicant must respond within six months. Failure to respond to an office action will result in the trademark application being abandoned.
Publication:
If an examining attorney approves the trademark application, it will be published in the USPTO’s Official Gazette. This provides an opportunity for other businesses to oppose the registration of the trademark.
Registration:
If there is no opposition to the trademark registration or if any opposition is resolved in favor of the applicant, the trademark will be registered with the USPTO.
The trademark application filing process involves completing and submitting the trademark application, responding to office actions, and waiting for publication and registration.
IX. Conclusion
In conclusion, trademarking a phrase is a valuable investment that can protect the brand and reputation of a business or individual. By taking the necessary steps to ensure that the phrase is unique and distinctive, not generic or descriptive, and not likely to be confused with existing trademarks, individuals and businesses can establish a strong presence in their respective markets and protect their intellectual property.