How to Trademark a Catchphrase

By Larissa Bodniowycz, J.D.

How to Trademark a Catchphrase

By Larissa Bodniowycz, J.D.

Trademarks are usually associated with business names and logos, but they are not limited to names and logos. Any word, phrase, or symbol that the public comes to associate with a business's goods or services is a trademark. This includes catchphrases and slogans that a business uses. Nike's "Just Do it," Emeril Lagasse's "Bam!," and McDonald's "I'm lovin' it" are just a few well-known catchphrases with a registered trademark.

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The federal trademark registration process for a catchphrase is the same as the process for registering any other trademark with the United States Patent and Trademark Office (USPTO). You can complete the process on your own by following the steps outlined here or use an experienced legal service provider to assist you.

1. Use the catchphrase.

A catchphrase becomes a trademark through use in association with your business's goods and services, not through registration. Registration simply expands the degree of trademark protection your catchphrase receives.

If you plan to use your catchphrase soon but have not yet, you can file an intent-to-use application, which allows you to obtain a filing date before any competitors do. However, there are additional fees for intent to use registrations and the actual registration will not be granted until your trademark is actually used and associated with your business.

2. Research whether someone else has already registered the catchphrase.

To avoid wasting time and money, you should research your catchphrase in the USPTO database and online before filing your trademark application. If another business is using the same trademark catchphrase for the same type of business, the USPTO will deny your application for trademark registration and will not refund your filing fee.

If another business is using the same or a similar catchphrase in association with another type of business, your trademark application might still be granted if there is no "likelihood of confusion" between the two marks. Whether there is likelihood of confusion is a complex legal analysis that an attorney can help you navigate.

3. Complete the trademark application.

Once you have determined that your catchphrase is not in direct conflict with or likely to be confused with another business's catchphrase, you fill out the initial USPTO trademark application form and submit it with the required filing fees. The TEAS Plus form is the correct form for most small businesses.

As part of your trademark registration, you need to state what class or classes of goods and services for which you are seeking registration. You can review the list of permissible classes on the USPTO website. You can apply for multiple classes but must pay a filing fee for each class.

Other information you need to complete your trademark application includes: the catchphrase, whether the catchphrase uses a particular font or style, the date the mark was first used in the United States or any country, and a "specimen," (an example) of how your catchphrase is used in association with your business's goods or services.

4. Respond to USPTO correspondence.

After you submit your trademark application, a USPTO attorney reviews it. That attorney may send you correspondence asking you to correct mistakes in your application, requesting additional information, or updating you on the status of your application. Make sure to review the correspondence carefully. If you do not respond to a request for information in time, you may need to start the entire application process again.

This portion of the site is for informational purposes only. The content is not legal advice. The statements and opinions are the expression of author, not LegalZoom, and have not been evaluated by LegalZoom for accuracy, completeness, or changes in the law.