If you want to trademark a phrase, catchphrase or slogan for your business, the quickest way is to follow these five steps.

1. Create a distinctive phrase, catchphrase or slogan

The first step on the path to a registered trademark is to create a distinctive phrase, catchphrase or slogan. Distinctiveness is necessary for a trademark to be successful and is a legal requirement for successful registration. Something like “BABY RHINO RULES” for a website hosting service is probably sufficiently distinctive to be a good trademark and registrable. But, something like “MICHIGAN FARMS ROCK” is probably not good or registrable for a farm market selling fruits and vegetables.

2. Ensure your phrase, catchphrase or slogan functions as a trademark

The second step on the path to a registered trademark is to ensure that your phrase, catchphrase or slogan functions as a trademark. It is not enough to come up with a clever and memorable phrase. The phrase must relate to some product or service that you are selling in the marketplace. To function as a trademark, the phrase must identify your business as a unique commercial source of some goods or services in the minds of consumers. For example, there were some recent efforts to trademark the phrase “Ok, Boomer” which failed because the phrase was “widely used message.” See NYTimes report here. A phrase that does not identify a business product or service cannot be registered and neither can a widely used phrase or a phrase that is merely informational. On this point, it may be useful to work with an experienced and knowledgeable trademark attorney — like ones at Revision Legal — for legal advice and counsel. There are other legal requirements to be considered, too.

3. Conduct a trademark search

The third step on the path to a registered trademark is to make sure your phrase, catchphrase or slogan is unique. That means you have to make sure that your phrase, catchphrase or slogan is not already being used by another business and not already registered. Using someone else’s trademark will get you sued for trademark infringement. There are various public and restricted databases that should be used for conducting a trademark search. Retaining an experienced and knowledgeable trademark attorney can help with this step.

4. Start using your trademark correctly in interstate commerce

The fourth step on the path to a registered trademark is to begin correctly using your trademark in interstate commerce. You should only do this once you are sure that your trademark is unique. As noted — and it is worth repeating — using someone else’s trademark will get you sued for trademark infringement. Correct use of a trademark in interstate commerce is a legal requirement for registering a trademark.

With respect to use of a trademark, there is a second option: you can file what is called an “intent to use” trademark application. If you want to file an “intent to use” application, then step four should be switched with step five discussed below. With an “intent to use” application, you certify that you intend to use the proposed trademark in the future. This allows you to file the trademark application before use. But, note that use of the trademark will still need to begin before the trademark application can be fully approved by the U.S. Patent & Trademark Office (“USPTO”).

5. File your application for trademark registration with the USPTO

The final step on the path to a registered trademark for a phrase, catchphrase or slogan is to officially file your application with the USPTO. If your trademark application is deemed legally sufficient and survives the publication period without challenge, then you will receive a Certification of Registration from the USPTO.

Contact Revision Legal

For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.

Legal Standards for Slogan Trademarks

Slogans and phrases face heightened scrutiny before the USPTO because examiners are trained to identify marks that merely convey ordinary, laudatory, or informational messages rather than functioning as indicators of source. The Lanham Act requires that a mark “function” as a trademark—meaning consumers must perceive it as identifying the commercial source of goods or services, not merely as a promotional message. Under 15 U.S.C. § 1052(e)(1), marks that are merely descriptive or laudatory are refused registration absent proof of acquired distinctiveness.

The USPTO’s examining attorneys apply the test articulated in In re Eagle Crest, Inc., 96 USPQ2d 1227 (TTAB 2010): would the relevant public understand the phrase primarily as a source indicator, or primarily as conveying some other meaning? Slogans that are widely used in the industry or that merely describe the quality of goods/services (“The Best You’ll Ever Have,” “Quality You Can Trust”) consistently fail this test.

The Distinctiveness Spectrum

Under the Supreme Court’s framework in Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976), trademarks fall along a spectrum of distinctiveness:

• Fanciful marks — Invented words with no prior meaning (KODAK, XEROX). Inherently distinctive. Strongest protection.
• Arbitrary marks — Real words applied to unrelated goods (APPLE for computers). Inherently distinctive. Strong protection.
• Suggestive marks — Words that suggest, but do not directly describe, a quality of the goods (NETFLIX suggesting internet-based movies). Inherently distinctive. Registrable.
• Descriptive marks — Directly describe a characteristic of the goods or services. Not inherently distinctive; registrable only with proof of acquired distinctiveness (secondary meaning).
• Generic marks — The common name for the goods or services. Can never be a trademark.

For a slogan, aim for the suggestive category at minimum. A slogan that is merely descriptive can be registered if you can prove that consumers have come to recognize it as your brand—but that requires years of use and substantial evidence of consumer recognition.

Acquired Distinctiveness and Secondary Meaning

If your slogan falls in the descriptive category, you can still seek registration on the Principal Register by establishing acquired distinctiveness (also called “secondary meaning”) under 15 U.S.C. § 1052(f). This requires evidence that, through long and exclusive use, the mark has become distinctive in the minds of consumers—that is, consumers associate the slogan specifically with your business. Evidence that supports acquired distinctiveness claims includes: length and exclusivity of use, advertising expenditures, consumer declarations, sales volume, and instances of intentional copying by competitors.

Alternatively, descriptive marks can be registered on the Supplemental Register while building secondary meaning. A Supplemental Register registration does not carry the full legal benefits of Principal Register registration, but it does provide the right to use the ® symbol and can serve as a basis for foreign registrations.

Maintaining and Enforcing a Slogan Trademark

Obtaining registration is only the beginning. Trademark rights are maintained through continued use in commerce and through periodic renewals (Section 8 and 15 declarations between years 5 and 6, and full renewal applications every 10 years). Monitor the USPTO’s Official Gazette for potentially conflicting marks published for opposition. Failure to oppose a confusingly similar mark within the 30-day opposition window—or an extended window obtained by filing a timely extension of time to oppose—waives that opportunity. Enforcement through cease and desist letters and TTAB proceedings protects your investment and prevents marks from weakening through unchallenged third-party use.

Contact Revision Legal

If you have questions about the issues discussed in this article, contact the experienced attorneys at Revision Legal. We handle intellectual property, internet law, and business law matters for clients across the country. Contact us online or call us at 1-855-RL-LEGAL.