Can You Trademark A Catchphrase?

A strong catchphrase can be a powerful branding tool. Catchphrases can help make a brand more recognizable and boost a company’s profile in the public eye. But can you trademark a catchphrase like you would an image or design? Fortunately, the answer is yes, a catchphrase may be trademarked by the United States Patent and Trademark Office (USPTO). However, the catchphrase can only be trademarked for its use in connection with specific products and services. At Mindful Counsel, our dedicated trademark attorneys are prepared to help you protect your catchphrase through a trademark: contact us today at (480) 422-6246 to learn more.

What Is a Catchphrase?

A catchphrase is a recognizable phrase or expression that has become popular through regular use, either by a real person or a character in fiction. Catchphrases are often found in pop culture, such as “Come on down!” in the TV show the Price is Right or Bart Simpson’s “Eat my shorts!”

However, many companies have recognized that catchphrases can significantly improve their branding. An example of a marketing catchphrase would be Nike’s “Just Do It.” These branding catchphrases immediately remind consumers of the brand upon hearing the phrase. When used in a branding or marketing context, a catchphrase can be trademarked to ensure that no other business entities use it without permission.

Trademark Protection for Catchphrases

A registered trademark offers legal protection for catchphrases and other forms of intellectual property that are used to identify particular goods or services in the marketplace. Once a catchphrase is successfully registered as a trademark, the owner receives exclusive rights to use the phrase in commerce. Trademark rights will only be granted if the catchphrase is distinctive and used in commerce.

Trademarks are used to identify the source of the product or service, so there is no protection against someone else merely using the phrase in a sentence. However, no one else may use the trademarked catchphrase as a way to profit from the sale of goods and services.

Requirements For Trademarking a Catchphrase

The United States Patent and Trademark Office (USPTO) has specific rules for registering a trademark. These rules apply to catchphrases and all other forms of trademarks. Individuals who wish to trademark a catchphrase should be aware of the following rules:

• The phrase must have a commercial use directly related to the sale of goods or services.
• The catchphrase must be used to identify a specific company as the source of goods or services.
• A catchphrase cannot be trademarked if the USPTO determines that it is likely to be confused with a phrase that has already been trademarked or has a pending trademark application and that the existing trademark is related to similar goods or services.
• The phrase needs to be distinctive and not generic or merely descriptive of the goods and services offered.
• Commonly used terms in business or the industry cannot be included in the catchphrase.
• The application will likely be denied if the catchphrase includes language used in everyday speech.
• A trademarked phrase only provides exclusive use rights in a particular class of business. These protections do not apply against use by others in different types of businesses.

Determining whether a catchphrase is eligible for trademark registration can be complicated. You can learn more about questions like “can you trademark a catchphrase?” by speaking with the experienced trademark lawyers at Mindful Counsel.

Should I Trademark a Catchphrase?

Individuals and businesses who believe they qualify should consider following these steps to trademark their catchphrase.

Make Sure the Catchphrase is Original

Applicants should make sure that their trademark is distinct enough to meet the USPTO requirements. An application to register a generic phrase as a trademark will be rejected.

Additionally, searching the United States Patent and Trademark Office (USPTO) database should be one of the first steps. When searching, look for existing trademarks that are similar to the phrase itself and are also used in the same types of goods or services. For example, an application to trademark the phrase “The Happiest Place in the World” for use in the branding of an amusement park would likely be rejected due to too much similarity to Disney World’s “The Happiest Place on Earth.”

Determine the Correct Filing Basis

All trademark applications require a specific designation for “filing basis”, which is the reason the applicant should be entitled to trademark protection. There are two main filing basis designations:

• Use in commerce – This designation is available if the phrase is already used concerning the sale of goods and services in interstate commerce.
• Intent to use – Applicants who plan to use the phrase in the sale of goods and services in commerce may apply on an intent-to-use basis. Applicants who file on this basis must provide a statement of use and proof of the mark in use within 6 months of filing.

Select the Right Class of Goods or Services

The USPTO requires all applicants to select all relevant goods and services when registering a trademark. Choosing the correct class is vital, as an error will result in a rejected application. Applicants should choose the class that applies to the products that will bear the catchphrase. For example, if the phrase will be used on T-shirts, the correct choice would be Class 25 – Clothing, Footwear, and Headgear.

Pay Filing Fees and Submit Application

The USPTO charges filing fees for each class of goods and services in a trademark application. Certain classes carry a $250 fee, while others are $350 per class. After you have ensured that your application is completely accurate and meets all USPTO requirements, submit it along with the necessary fees.

Contact Our Experienced Trademark Lawyers

Business entities that have valuable catchphrases should take the necessary steps to protect this intellectual property. Registering a trademark ensures that only the owner may profit from the use of the catchphrase in connection to particular goods and services. However, successfully registering a trademark can be an arduous process. This is why many applicants seek legal guidance from an experienced attorney. At Mindful Counsel, our experienced trademark attorneys are prepared to answer questions like “can you trademark a catchphrase?” and other trademark concerns. Contact us at (480) 422-6246 or schedule a consultation to learn more.