Potential clients frequently ask me if they can trademark a phrase. Well, whether you can register a phrase with the United States Patent and Trademark Office (USPTO) essentially depends on (1) the nature of the phrase itself, and (2) the manner in which the phrase is used. If the phrase doesn’t indicate the source of your products/services, or doesn’t identify and distinguish your products/services from those offered by your competitors, then it cannot be protected as a trademark. In other words, you cannot trademark a phrase unless it serves a branding purpose (i.e. it functions as a slogan or tagline). If the USPTO determines that your phase fails to function as a trademark, it will send you a trademark office action explaining why your phrase is being refused registration.
A geographically deceptively misdescriptive trademark (which is different than a primarily geographically descriptive trademark) is ineligible for federal registration with the United States Patent and Trademark Office (USPTO) on either the Principal Register or Supplemental Register. The Lanham Act (which governs trademark registration in the US) specifically prohibits the registration of trademarks that are “primarily geographically deceptively misdescriptive” of the products/services with which they are used.
The concept of “acquired distinctiveness” (also referred to as “secondary meaning”) is extremely important when it comes to registering a non-distinctive trademark with the United States Patent and Trademark Office (USPTO). The following are common examples of non-distinctive trademarks:
- Merely descriptive trademarks
- Trademarks that are primarily merely surnames
- Deceptively misdescriptive trademarks
- Primarily geographically descriptive trademarks
Non-distinctive trademarks are normally only eligible for registration on the Supplemental Register (as opposed to the Principal Register). But, there are circumstances under which non-distinctive marks can be registered on the Principal Register. Those circumstances have to do with the concept of acquired distinctiveness under what is known as Section 2(f) of the Trademark Act.
A trademark that is primarily merely a surname is only eligible for registration with the United States Patent and Trademark Office (USPTO) on the Supplemental Register, unless it has acquired distinctiveness or “secondary meaning” in the minds of the purchasing public. A “surname” is also often referred to as a “last name” or “family name.” Some very common examples of surnames include “Smith,” “Johnson,” “Williams,” and “Jones.” However, there are millions of other surnames among the US population, many of which are shared by only a handful of people. As such, it’s not always clear when a trademark would be considered primarily merely a surname.
After you file your trademark application with the United States Patent and Trademark Office (USPTO), you may receive a trademark office action requesting that you provide a disclaimer of a particular element of your trademark. Usually, the requested disclaimer is for words or phrases that comprise a portion of your trademark, but the request could also be to disclaim a design or portion of a design. The good news is that dealing with a such a request is generally quite straightforward and non-controversial.