In my practice as an intellectual property attorney clients often ask me for guidance on what names and phrases they can trademark.
Phrases, names, slogans and logos can all be trademarked with the United States Patent and Trademark Office. Although phrases are applicable for trademark protection, not all phrases will pass the scrutiny of the United States Patent and Trademark Office. Some phrases may not meet USPTO criteria, or may raise specific considerations regarding brand recognition.
Generic Marks
Generic phrases cannot be registered with the USPTO because generic terms are too useful for describing goods and services. As a result, the USPTO won’t protect a generic mark because they do not want to give a single person control over a widely used slogan, such as “the lowest prices in town.”
Already Registered Marks
Phrases that are already registered with the USPTO may be not trademarked unless they have been abandoned. Additionally, if your slogan is very similar to another slogan being used, you could face opposition from the other mark holder. If your mark is opposed, you will need to draft an answer to the notice of opposition before the United States Trademark Trial and Appeal Board.
Phrases
In order for a phrase to be trademarked it must be distinctive and it should have secondary meaning. A phrase that is merely descriptive generally cannot be registered with the USPTO. To apply for trademark protection for a phrase that is merely descriptive, you must argue that the public has come to identify the phrase with a particular good or service.
The phrase, “better than the competition” is an example of a phrase that could not be trademarked with the USPTO. The phrase is generic because it could apply to many different products. It also does not have secondary meaning because it could easily apply to a wide range of different potential sources. The phrase, “just do it” is a great example of a phrase that can be trademarked.This is because it is distinctive in that it doesn’t necessarily apply to clothing or sports apparel and it has secondary meaning as the public has come to identify the parent company as Nike.
References
Slate: Can You Trademark the Phrase “Let’s Roll”? [ http://www.slate.com/articles/news_and_politics/explainer/2002/02/can_you_trademark_the_phrase_lets_roll.html]
Harvard University: Overview of Trademark Law [ http://cyber.law.harvard.edu/metaschool/fisher/domain/tm.htm]
Iowa State University: Trademark Legal Basics [ http://www.trademark.iastate.edu/basics/]
Ius Mentis: Crash course on trademarks: What are trademarks [ http://www.iusmentis.com/trademarks/crashcourse/whatis/]
Resources (Further Reading)
USPTO: Frequently Asked Questions about Trademarks [ http://www.uspto.gov/faq/trademarks.jsp]
