How to trademark a phrase
To answer how to trademark a phrase question, you need to start with the consideration of the following factors:
What is the name of the phrase you are planning to apply for a trademark?
Is there any exact or similar trademark phrase pending application, or registered on the principal or supplemental register? Further, you need to check whether there are any existing state registered trademarks or common law-based trademarks, Registration of this competing trademark phrase on the supplemental register denotes a possibility of descriptiveness of the mark. Descriptiveness is one of the factors indicating lower strength of the mark. They generally have lower strength in the market-place and end up on supplemental register placement. Registration on the principal register denotes that the phrase enjoys the full benefits of registration. These prior registrations can be overcome by cancellation proceedings at USPTO. Opposing party may also try federal court litigation. Consider the cost of litigation before proceeding in this route.
If already registered, then determine whether you can find a different phrase. This alternative phrase should not cause consumer confusion about the source of the phrase? Typically, your trademark attorney needs to conduct a “likelihood of confusion” factor-based analysis. You can find further about the likelihood of confusion at the Trademark Manual of Examining Procedure.
Usually arbitrary and fanciful marks are highly protected. They are easier to receive a trademark registration on the principal register after clearance of the mark. Whereas in the following decreasing order suggestive, descriptive and generic marks receive less or no protection.
Suggestive and descriptive mark registration sometimes may be limited to supplemental register. Some other times they do not receive any protection. Receiving the registration depends on the phrase, your competition and general market use of the phrase. You cannot lock-out the descriptive and suggestive phrase all for yourself. The reason is the wider members of the industry use the phrase to represent something. “Secondary meaning” may help over-time to convert some phrase from the descriptive nature to the pre-dominant source-identifying function status. Then the mark can be entered into the principal register. It typically depends on the phrase usage in the industry. It is not based on self-declaration of the owner of the mark that the mark achieved such status. By following the above steps regarding how to trademark a phrase, you can start planning about any modifications.