From punchlines to tweets and meme themes, most everyone has a moment where they were told “You should trademark that!”
However, despite what you may have been led to believe, simply using a phrase in social media, on a t-shirt, tote bag, or coffee mug does not establish trademark rights. Not every phrase qualifies for trademark protection, and creating a protectable mark takes a bit more effort than hitting the PUBLISH button.
We will explore why that is true, and the considerations you should be aware of before you plan to spend your anticipated income from that soon-to-be Internet-famous registered mark.
What Qualifies As a Trademark?
First, it’s important to establish what kind of information can actually be registered as a mark. There are three main criteria that are used to determine if your phrase is something that can be protected.
- A trademark is an adjective.
If you remember high school English class, an adjective describes a noun. “Kellogg’s®” is a type of cereal. “Toyota®” is a kind of automobile. “Xerox®” is a type of photocopier. For trademark purposes, the noun is the product or service being offered, the protected trademark is the adjective describing that noun.
- A name, brand or logo must act as a trademark.
A trademark must identify the source of products and services – so that consumers know who produces the product or is providing the service. This is often done through labeling and packaging. The Coca-Cola® mark is found on the soda can. The Major League Baseball® logo is printed on the labels inside the shirt and on the hang tag. The John Deere® name and deer logo are stamped onto the lawn tractor.
A phrase printed on the front of a sweatshirt is generally not an indicator of source for the shirt. Usually, such a design is considered “merely ornamental” use and does not qualify for trademark protection or establish rights.
- The mark should do more than describe goods or services.
Any trademark sought to be registered with the United States Patent & Trademark Office (PTO) should be unique. After all, the purpose of a mark is to distinguish the products/services of one provider from another. A phrase merely describes the goods or services can apply to anyone, and everyone is permitted to use that phrase. Descriptive phrases are not unique and therefore, are ineligible for trademark protection.
Now that you understand these concepts, you can step back and examine the phrase you are considering to see if it qualifies as a trademark.
What Kind of Phrases Can Be a Registered Trademark?
“But I see phrases protected all the time!” you might be saying to yourself. Of course, and there are clear examples of protected phrases:
“Let’s Get Ready to Rumble!®” was registered in 1992 by legendary sports announcer Michael Buffer. After securing the rights in the phrase, and with his distinctive presentation, he went on to license its use for over $400 million.
Wendy’s® registered “Where’s the Beef?®” in the 1980s after the phrase caught on with consumers of its famous burgers.
“Choice of a New Generation®” was a trademark used by Pepsi® from 1984 to 1991 for their pop star- filled advertising campaigns.
In all of these examples, the unique phrases were tied to a specific product or service, and signaled to consumers their connection to just one person or company. If your phrase is not actively linked to a brand that you own, trademark protection likely does not apply.
Protecting Your Phrase – Copyright vs. Trademark
If you create a great catchphrase, and think it could be protected, consult a specialist. An attorney experienced in intellectual property and trademark law can guide you as to whether your phrase qualifies for protection, the steps you might take to establish those rights, and whether it’s worth your time and investment.
Feel free to reach out to us with your questions, we’re happy to help.