Most business owners and entrepreneurs know the importance of a name and logos. They are the cornerstones of most brands. Unfortunately, these owners sometimes overlook a keystone to their brands – catchphrases, slogans, and taglines.
Phases, slogans, and taglines are examples of phrases that can resonate with consumers long after they see (or hear) an advertisement. Sometimes, these phrases can even surpass names and logos. Consider:
- “Just Do It.®” (Nike)
- “Don’t leave home without it.®” (American Express)
- “I’m lovin’ it.®” (McDonald’s)
- “Nationwide is on your side.®” (Nationwide Insurance)
These phrases show the power of trademarks.
The single best way to protect a trademark is with Federal trademark registration.
They come with important nationwide protections that ensure that no one else can use your phrase. A few reasonable proactive steps will go a long way toward safeguarding and securing your phrase.
Whether you’ve been running a successful business for years, just started a business, are considering launching one, here’s what you need to know:
A Bit About Trademarks and Protecting a Brand
Phrases, like all trademarks, represent brands. They help customers find the products that they like and distinguish them from the competition.
Trademarking your phrase gives you the exclusive right to use it. If you don’t, then your competition can use it or develop one that is really close. Also, only one business can own a brand in each industry. Typically, it’s whoever trademarks it first.
If someone else trademarks your phrase first, they’ll own the exclusive right to use it nationally. You’ll likely have to rebrand.
Here’s how to start the process to trademark your phrase, slogan, or tagline:
- Select a strong, protectable phrase.
- Check the availability of your phrase name as a trademark.
- Collect your information and decide on a strategy for your Federal trademark application.
- Prepare and file your new application (correctly).
- Start using the right trademark symbol with your phrase.
1. Select a strong, protectable phrase.
The key to getting a Federal trademark is to first select a phrase that’s strong in a trademark sense. Trademarks are not created equally. There are different kinds, and some are more effective and easier to protect than others.
The best trademarks are distinctive and memorable. They are strong because they excel at reflecting brands.
Some trademarks, however, are weak because they only describe aspects of products or services. Others are legally unprotectable, meaning anyone can use them.
- Start by trying to include invented words or words that have no association with your products or services (“Just Do It.®” for footwear). If that does not work, then…
- Try words that allude to your products and services (“Don’t leave home without it.®” for credit card services).
- Always try to avoid away from using only words that:
- are generic for a product or service;
- are often used in business or industry;
- only describe characteristics and features; or
- are already part of everyday speech.
Read More: The Four Types of Trademarks + Strength
If you don’t know whether your phrase is arbitrary (strong) or descriptive (weaker), you may be better off consulting an experienced trademark attorney. In any event, knowing which kinds of trademarks are strong important. Otherwise, you could be wasting your time and money.
2. Check the availability with a trademark search for similar marks.
The next step is to determine if your phrase has been trademarked by anyone else. This is because a lot of phrases are already trademarked. So, you may want to run a trademark search of the Federal trademark database to find exact and close matches. It can also be useful to conduct Internet searches.
These searches aren’t as straightforward as inputting your phrase and hitting search. Exact and similar trademarks used by other businesses are relevant to the Federal registration of your trademark. So, too, are misspellings, similar-sounding words and spellings, and foreign translations.
The objective here is to make sure that your phrase is not similar or easily confused with someone else’s mark. For all of these reasons and others, it’s usually best to have an attorney run your trademark search.
Get customized legal advice and help every step of the way through the registration process. Contact us today.
3. Collect your information and decide on a strategy for your Federal trademark application.
Applying for a Federal trademark is more than just filling out online forms. That is the easiest part of the process.
The preparation of a new trademark application begins by making some tactical decisions about the protection for which you will want to apply.
When you apply for a Federal trademark, you start a Federal legal proceeding – and it can get complex in a hurry. The Federal trademarking process involves making dozens of legal decisions and judgment calls. Plus, these decisions and judgment calls are interrelated, and some wrong choices can sink your application from the start – without you even knowing it. So, the most successful applicants start the application process with a strategy.
For starters, you’ll need to decide which products/services are included in your application and which ones should be excluded. You’ll also need to figure out the correct filing basis for their application, as well as how you are going to show the USPTO that consumers perceive your phrase as a brand.
If you don’t understand the legal consequences of each of these options, you’re very likely going to get one or more of them wrong, which will impact your brand protection.
Also, every application must be filed in the name of the owner of the mark. The owner may be an individual, a corporation, a partnership, or an LLC, for example. The right choice depends on several factors. If you get this wrong, you’ll need to refile the application and start again.
Further, you’ll also be required to swear to the truth of specific statements about the choices in your application. If you get any of them wrong, your application may be unenforceable.
These are just some of the reasons why DIY applications are 50% less likely to succeed at the USPTO.
4. Prepare and file your trademark application with the United States Patent and Trademark Office (correctly).
Every application starts a Federal legal proceeding, involving countless U.S. Patent and Trademark Office rules and regulations. These rules and regulations impact EVERY aspect of a new Federal trademark application. And, you’ll be required to comply with them even if you don’t know or understand them.
Also, the application system uses trademark jargon and “terms of art,” which are words that have specific meanings only in the world of trademarks.
Here, it is important to understand that not all applications result in registrations. The USPTO severely limits the types of changes you can make to an application after it is filed. So, mistakes during submission can easily sink an application.
5. Start using your mark and use it with the right trademark symbol.
Using a trademark symbol is an important signal to consumers (and the competition) that your logo represents your brand.
There are three trademark symbols. They are:
- the letters TM
- the letters SM, and
- the letter R in a circle — ®
The letters TM are a trademark symbol for unregistered trademarks (marks for products like shoes or computers).
The letters SM are a trademark symbol for unregistered service marks (marks for services such as legal services).
The ® is a trademark symbol for Federal trademarks (trademarks or service marks registered with the U.S. Patent and Trademark Office). The ® trademark symbol is reserved for Federal trademarks only – after you have a Federal trademark registration.
Read more: All About Trademark Symbols (in Plain English)
For more than twenty years, Michael Kondoudis has been the go-to trademarking expert for businesses of all shapes and sizes. Michael is a USPTO-licensed trademark and patent attorney, educator, speaker, and author of the Amazon best-seller: Going From Business Owner to Brand Owner. He is also an authority trusted by national news media on major trademark stories.
Fun Facts: Michael is a member of the Bar of the U.S. Supreme Court and an actual rocket scientist (B.S. Astronomy and Astrophysics, Indiana University 1994).
