Can You Trademark a Catchphrase?
Yes. You can register a catchphrase as a trademark with the United States Patent and Trademark Office (the “USPTO”). To do so, the trademark application must meet the general requirements for trademark registration.
A catchphrase is “a well-known sentence or phrase, especially one that is associated with a particular famous person.” A catchphrase is similar to a slogan. A slogan is “a short and striking or memorable phrase used in advertising.”
What Are the Requirements for Catchphrase Trademark Registration?
Use in Commerce
“Use in Commerce” is the first requirement. The applicant must specify what goods and services the catchphrase is used for. The applicant must use the trademark in commerce for the goods and services before it can be registered. A trademark application can be filed before “use in commerce.” This is called an “intent to use” application. You must specify goods and services in an intent to use application as well.
The applicant must also provide the trademark office an example of how the trademark is used in commerce. This is called a “specimen.” The goods and services determine the appropriate specimen.
Function as a Trademark
“Function as a Trademark” is an additional requirement to register a catchphrase as a trademark. A term that does not identify the source of goods and services fails to function as a trademark.
“Messages that are used by a variety of sources to convey social, political, religious, or similar sentiments or ideas are likely to be perceived as an expression of support for, or affiliation or affinity with, the ideas embodied in the message rather than as a mark that indicates a single source of the goods or services.” (1202.04(b) Widely Used Messages.)
A trademark’s purpose is to identify the source of goods and services. Commonplace and widely used sayings do not inform customers of source. An exception is if the trademark has “acquired distinctiveness.” See TMEP 1202 Acquired Distinctiveness or Secondary Meaning for more information regarding acquired distinctiveness.
Lebron James applied to register the catchphrase TACO TUESDAY as a trademark for a podcast and website with online videos and other content. The trademark office rejected the application because TACO TUESDAY fails to function as a trademark. It is too commonly used to identify any one particular source.
Availability (Not Already Registered)
The USPTO rejects applications if a conflicting trademark is already registered. A conflicting trademark is one that is “likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. . . .” (15 U.S.C. §1052.)
A prior registration does not need to be exactly the same to be a conflict. The USPTO reviews a number of factors. Similarity of the trademarks and similarity of the goods and services are the most heavily weighed factors.
How to Register a Catchphrase as a Trademark
Brand Strategy Session
We start with a brand strategy session. We will discuss the owner’s business plan. We will discuss advertising campaigns and how the client uses the trademark. This information helps us conduct a clearance study and draft a well-considered trademark application.
We recommend a clearance study to determine if the trademark is available for registration. The USPTO will perform a detailed and exhaustive search for conflicting trademarks. Trademarks that are similar, but not the same, can be conflicts. Our clearance study is designed to provide advanced warning of conflicts. The study allows the client to make an informed decision about whether to use the trademark while the application is pending.
Draft and File the Trademark Application
After the brand strategy session and clearance study, Hartmans Law’s trademark attorney prepares the client’s trademark application. The client reviews the application and approves it before filing.
Statement of Use
A Statement of Use is required if the trademark was based on “intent to use.” The Statement of Use must meet USPTO requirements. The USPTO closely examines the Statement of Use.
Legal Advice Regarding Enforcement and Renewal
After registration, Hartmans Law provides its clients advice regarding enforcement practices. The firm also counsel’s clients regarding renewal deadlines and requirements.