The call usually goes like this:
“Hi, you’re a trademark attorney, right? So the thing is, I’ve come up with the next great catchphrase. It’s bigger than ‘Who let the dogs out,’ hotter than ‘That’s hot.’ Can you trademark it for me?”
“How do you plan to use it?”
“Dunno yet. I just want to trademark it before anyone else can.”
Not so fast. Before you can get trademark protection in the next great catchphrase or symbol, you need to use it as a trademark. Just having a great idea in a vacuum doesn’t allow you to claim it as your own. To use a word, phrase or logo as a trademark, you need to use it “in commerce” in connection with a particular product or service.
What’s “use in commerce,” you ask?
The Trademark Act knew you’d want to know and has the answer: “Use in commerce” is “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” In plain English, you need to place the mark on the product or its packaging and sell the product, or, in the case of services, use the mark in the sale or advertising of the service.
Need some examples? Here’s how some popular catchphrases and symbols fared in the U.S. Patent and Trademark Office:
That’s hot: Paris Hilton’s famous catchphrase was accepted for registration for men’s and women’s clothing. She also applied in the category of electronic devices like cell phones but abandoned that mark.
Octomom: The media-labeled “Octomom,” Nadya Suleman, has trademark applications pending in three categories, a reality TV show, diapers and clothing. A Texas company also has an application pending — in the category of computer software and toys — but the Trademark Office has issued a preliminary rejection on grounds that the mark falsely suggests a connection with the famous Suleman.
Music City: The Nashville Convention & Visitors Bureau registered a design logo including the phrase “Music City” for promoting business and tourism, but the Trademark Office wouldn’t extend protection to the words “Music City” alone, finding the phrase geographically descriptive as a nickname for Nashville.
Emoticons: Dozens of emoticons are registered as trademarks, including, for example, :O) for clothing.
A couple other things to keep in mind if you want to become the proud owner of a catchphrase:
- A catchphrase isn’t always protectable as a trademark even if you’re using it in commerce. Slogans used on products such as T-shirts have been refused registration as ornamentation buyers will perceive as conveying a message rather than indicating the source of goods. And merely informational or laudatory slogans ordinarily used in the particular trade or industry — such as “Think Green” for paper products — are not registrable.
- You don’t have to wait to file a federal trademark application until you’re using the mark in commerce as long as you have the bona fide intent to use it in commerce — but you still need to indicate to the Trademark Office how you intend to use the mark, and you have a deadline in which to start using it.
- Make sure no one else out there has thought of the same bright idea before proceeding with registration.
- Once you do make the mark yours, police it. If you let the world use it freely without your permission in connection with your category of goods or services, it can become fair game for anyone to use. Call unlicensed users on their infringement, insist they stop or get a license from you, and slap the ™ symbol all over the mark (and the ® symbol once the mark’s registered in the federal Trademark Office) to show you have dibs on it.
Now, then, Think Outside the Box — but be careful, because that mark’s already taken in a number of categories.