Phrases are powerful branding tools. Some unforgettable branding campaigns include Nike’s “Just do it”; Wendy’s “Where’s the beef?”; or American Express’s “Don’t leave home without it.” For-profit and non-profit corporations derive commercial value from such phrases by making customers think of them when they hear the phrase. For example, if you see the phrase, “Just do it,” the first thing that comes to mind is NIKE! With that level of recognition for just a catch-phrase, it’s no wonder that many businesses seek trademark registration and protection for a catchphrase. This then begs the question: Can you trademark a catchphrase? A short and unhelpful answer is that it depends. To have a catchphrase gain trademark protection, the process requires a difficult application process which we will walk through below.
Why is Registering a Catchphrase difficult?
By default, the law prefers not to grant trademark protection to a word or phrase that is commonly used in an industry, mainly because registering a mark prevents other people from using that mark in association with similar goods or services in similar or related industries. Not only that, but the United States Patent and Trademark Office (“USPTO”) has recently shown a predilection to reject registration for catchphrases for similar reasons.
Regarding catch-phrases specifically, the USPTO Trial and Appeal Board has refused to allow registration of phrases on the “failure-to-function” basis. This means that a catch-phrase cannot be registered if it is informational, descriptive, and widely used in the market in which the mark is used. Examples of catch-phrases that have failed to gain trademark protections include “Legal Landmines” and “She Knew She Could” on the grounds that the marks were merely informational, and customers were accustomed to hearing or seeking the phrase and its derivatives in relation to the services provided by the applicants. As Judge Thomas Shaw of the TTAB states, “as a matter of competitive policy, it should be close to impossible for one competitor to achieve exclusive rights in common phrases.”
How do I register a Catchphrase?
Obviously gaining trademark protections can be difficult. However, if one can prove that the catch-phrase they wish to use is unique enough, distinctive enough, and exclusive enough to be considered that person’s or company’s property, then trademark protections may be granted. With this in mind, here are some considerations for your business or nonprofit when applying to register your catchphrase for trademark protections. Trademark registration can be an expensive and tedious process – so you really want to make sure that you have a registerable mark in the first place. If you believe you have thought of the perfect phrase and are considering registering it, here are a few suggestions:
- Think of a distinct and original phrase. Steer away from a phrase that:
- is commonly used in commerce to refer to goods and services offered by similar businesses e.g., Legal Landmines was commonly used in the legal market to refer to avoiding concealed yet incipient crises relating to the law.
- is informational e.g., “Drive Safely” and “Think Green” were denied registration based on the fact that they were informational slogans.
- is descriptive e.g., “for a day, a week, a month or more” was held to be highly descriptive and informational in nature, furthermore, purchasers would be unlikely to perceive it as an indicator of the source of hotel services.
- is considered part of everyday speech.
- Consider whether the phrase will prompt a consumer to think about the source of the product or service. A great example is the trademark “Quicker Picker Upper” for Bounty paper towels.
- Conduct a quick google search to see how other individuals use the phrase.
- Consider whether you will be able to police such a mark? A requirement for maintaining trademark rights includes the ability to actively prevent other people from using the mark for similar goods and services. Policing a mark can be expensive, especially if you are trying to protect commonly used words for your market!
- Consider how you will use the mark in connection with the goods and services offered by your business. Based on how you will use it and where it would be placed/used, does registration make sense?
Feel free to reach out to us if you want to discuss your trademark!
The above article is for general information purposes only and should not be relied upon as specific legal advice. This article, or contacting Apex, does not in any way form an attorney-client relationship. If you have any questions or would like to learn more, please contact Maha Jafarey at firstname.lastname@example.org.