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.
Can I Trademark a Phrase? – Ornamental Use
People often reach out to me after being notified by the USPTO that their phrase is being refused registration on the basis that it’s being used in an ornamental or decorative manner. In other words, the phrase as used on the specimen submitted with their trademark application (or Statement of Use or Amendment to Allege Use) is nothing more than an ornamental or decorative feature of the products. Most of the time, this rejection arises when the specimens consist of photos of clothing, jewelry, fashion accessories, bags, beverageware, key chains, and stickers that prominently display the phrase. Unfortunately, you cannot trademark a phrase when it’s used in this way because it isn’t functioning as a trademark. It isn’t serving any branding purpose. Said differently, consumers aren’t choosing to purchase your product because it comes from you or because they believe the quality of your product is superior to that of your competitors. Rather, they are buying your product simply because they like the phrase, the phrase resonates with them, and the phrase looks good on the product.
However, if you receive an ornamental use refusal from the USPTO, you do have some options for potentially overcoming it and eventually obtaining a trademark registration. Here are a few of them:
- Amend your trademark application to seek registration of your mark on the Supplemental Register
- Assert a claim of acquired distinctiveness under Section 2(f) and submit evidence that consumers exclusively associate the phrase with you and your products
- Submit evidence that the phrase is an indicator of “secondary source,” meaning evidence that the phrase is already recognized as a source indicator for other products/services you offer under the same phrase
- Amend your application to Section 1(b) (intent to use). Please note that you cannot amend to Section 1(b) after the Statement of Use is filed.
- Submit a substitute specimen showing non-ornamental use of the phrase (if the substitute specimen also complies with the USPTO’s other requirements)
In the somewhat unlikely event that you’re unable to utilize at least one of these options, your trademark application will go abandoned. You’ll then have to start the trademark registration process all over again by filing a new application (unless you meet the requirements for filing a Petition to Revive).
As a side note, I’d like to quickly point out that you’ll receive a similar refusal if you attempt to trademark a product name or trademark a logo that’s only used in an ornamental/decorative manner. The options for overcoming the rejection are the same as if you had attempted to trademark a phrase.
Can I Trademark a Phrase? – Conveying Information or Message
Another common rejection people receive when they attempt to trademark a phrase is that it fails to function as a trademark because it merely conveys an informational, political, social, or religious message. In other words, consumers don’t perceive the phrase as identifying and distinguishing your products/services from the products/services sold by your competitors, but instead see the phrase as simply communicating a social, religious, or political perspective or point-of-view. For example, phrases such as SUPPORT THE PRESIDENT, BELIEVE IN JESUS, KILL THE TERRORISTS, and LOVE THY NEIGHBOR aren’t eligible for federal registration with the USPTO because they primarily convey information or messages. Having said that, in the course of performing trademark searches for my clients, I have come across dozens (if not hundreds) of existing trademark registrations that probably should have never issued because the registered phrase clearly expresses a message, opinion, perspective, or point-of-view. So, I can tell you from experience that the USPTO hasn’t been consistent when determining which phrases function as trademarks and which ones don’t.
Unlike the ornamental use refusal discussed earlier, there are no options for overcoming this type of refusal. You cannot trademark a phrase that conveys information or a message no matter how long you’ve been using the phrase, the manner in which it’s used, the popularity of your products/services, or even if you’re the first and only person to use the phrase. It’s completely barred from registration on either the Principal or Supplemental Register.
Can I Help You Protect Your Phrase?
I’m experienced US trademark attorney Morris Turek. If you would like to trademark a phrase, or you’ve received a rejection from the USPTO indicating that your phrase isn’t entitled to registration, please feel free to contact me at your earliest convenience for your free, no-obligation consultation. I can be reached at (314) 749-4059, through email at email@example.com, or by filling out my contact form located below. I look forward to hearing from you soon.