Can You Trademark A Catchphrase? - Gerben Intellectual Property

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A good catchphrase can go a long way toward establishing a recognizable brand for an individual, a character, and/or a business. For a business, a catchphrase is typically thought of more as a slogan, but what about something that’s frequently spoken by a person, say, in the course of their profession, or as part of a performance? Those phrases typically become an integral part of that person’s “brand,” and contribute to their fame and profitability. But can they be trademarked?

The answer is yes – a catchphrase can be trademarked, but only for the protection of its use in connection with a particular product or services. The primary role of a trademark is to identify the source of a product or service. The mere act of speaking a catchphrase isn’t, on its own, an act of commerce, so a trademark wouldn’t cover or protect you from someone else just saying your phrase. What a trademark would protect is your exclusive ability to profit from your catchphrase through the sale of products or services.

What kind of “use in commerce” would apply to a catchphrase? Say you’re a broadcaster – your catchphrase could be trademarked and protected as the title of your show, meaning no one else can name a show with that phrase, or one similar to it. If they did, the public might tune in expecting to hear you – a situation of consumer confusion that trademarks are designed to prevent.

One of the more common ways to protect a catch-phrase is to develop a brand of clothing or apparel around the phrase itself. By making a clothing brand with your catch-phrase you can obtain a federal trademark registration as it relates to the brand of clothing.

Catchphrases can spread and catch on so quickly in the day and age of digital media – it’s an unfortunate situation where you might see your phrase for sale on a t-shirt selling on Etsy before you even realized how popular it had gotten. For that reason, it’s a good idea to register a trademark for your catchphrase if you intend to monetize it through the sale of products or services. If you wait until it’s already entered the public vernacular, you may have difficulty claiming it as your own, or even proving that you were the first to use it.

Here are four steps to get started with the trademark registration process for a catchphrase:

1) Conduct a trademark search for your catchphrase

Before you can register your trademark, you need to make sure that it is in fact original – that it doesn’t infringe on an existing trademark. Since you’ll be using it in conjunction with the sale of a product or service, you’ll need to search within those categories you intend to do business in. If you want to sell t-shirts, for instance, you need to make that no other apparel company has an identical or similar name to your phrase, and that no one has previously registered for that phrase (aside from a company name), either.

The United States Patent & Trademark Office, which reviews and approves trademark applications, has a public trademark research tool available. You can use that to search for instances of your mark, or one similar to it. For a mark like a catchphrase, however, it’s important to be aware of all potential types of similarities between your mark and another one – the USPTO will reject anything with the potential for confusion. Catchphrases are especially difficult as there are more factors to account for with multiple words – a trademark attorney with more powerful search tools may be better able to assist you with your search.

2) Establish – or plan – how you’ll use your catchphrase in commerce.

In order to register a trademark with the USPTO, the mark must be actively in use in commerce, with one exception – you can file an “intent to use” application with the provision that you begin using your mark in commerce within one year. Inactive marks can be cancelled, so it’s important to know how you want to establish use of your mark in commerce at the time you submit your trademark application. You’ll also need to indicate in which class or classes of product or service you intend to use your mark.

3) Submit your trademark application.

Your trademark application is can be submitted online to the USPTO. While the application form may seem like something that you can complete yourself, there are a lot of potential “trap doors” in the application. If you complete the application incorrectly it could lead to the refusal of the application by the USPTO. Therefore, it is always considered highly advisable to engage a trademark lawyer to assist with the filing of your application.

4) Police your trademark.

Once you become the established owner of your mark, with a federal registration, it’s up to you to protect and police your mark. Catchphrases can easily “go viral,” so you need to take an active role in ensuring that no one else attempts to use your mark to sell or promote their product or service. A federally registered trademark gives you much more latitude to be proactive and aggressive in protecting your mark – be sure to make good use of your rights by registering and defending it.

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Josh Gerben, Esq.

Josh Gerben, Esq. is a nationally recognized trademark attorney and the founder of Gerben IP. Since launching the firm in 2008, he has overseen the registration of over 8,000 trademarks and handled over 500 trademark disputes. Josh's practice focuses on building and defending global trademark portfolios for clients. These clients include entrepreneurs, private equity-backed businesses, athletes, celebrities, and public companies. Frequently quoted by major media outlets like CNBC, CNN, The New York Times, and The Wall Street Journal, Josh is widely regarded as a leading authority in trademark law.

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