Can you Trademark a Phrase?

Have a catchy phrase or slogan you want to protect and to be used exclusively for your business? The good news is a phrase, like other forms of intellectual property, can be registered trademark. However, certain criteria must be satisfied as unique to trademarking a phrase. These, along with the other steps to register a trademark, are outlined in this article.

1. Establish the Distinctiveness of the Phrase

Like other trademarks, a phrase must be unique in nature for it to be registered as a trademark. This usually means the phrase cannot have common usage and should have acquired its own in association with the brand or product it is promoting. The longer the phrase has been in use, the more likely it is to be found as a distinguishable phrase only used when referring to the brand.

If the phrase does have common usage, then it also must have been used in relation to the particular brand to such an extent that it has gained second meaning within that context.

Naturally, the phrase cannot have been registered already and or have similar wording to another one. As such,  to fully ensure your phrase isn’t registered, undertaking an ATMOSS search is highly recommended. As ATMOSS, a database managed by Intellectual Property Australia (IP Australia) has a complete record of all registered trademarks in Australia, an extensive search can greatly help in identifying any duplicates. For more information on ATMOSS, see our article on “How to get a Trademark.”

2. Apply for your trademark

With the preliminary search complete, a business owner may now begin the application process. This application must be made by the owner of the company name. The owner can either be a company, incorporated association, individual or more than one of these three ownership categories

Applying is an online process through IP Australia and the applicant must include a copy of the trademark,  the owners contact details and an outline of the goods and services with the relevant class. The applicant also has to pay a filing fee.

3. Find the class of trademark

The next step to take is to identify which class a trademark falls under. A good or service may fit one or more of the 45 of the trademark classes. Identifying this correctly is of particular importance so as to be able to sell your good or service in the class in which it is registered. As this can be a difficult process, IP Australia provides a guide on their website to help with ease of identification

4. Await the outcome of your application?

Once the application has been filed, the applicant must wait for the trademark to be examined, something which can take up to 3-4 months.

In assessing a trademark, the examiner will consider factors such as whether the trademark is similar/identical to another one, contains inaccuracies, prohibited/unlawful references or causes confusion.

If unsuccessful, the applicant will then receive an adverse trademark report listing any issues to be rectified. Applicants have a 15 month period to consider this report, make corrections and submit a response to it.

However, if no problems are identified, then the trademark will be registered, and you will be informed of the outcome in writing.

Key Takeaways

While trademarking a phrase requires much the same steps as other pieces of intellectual property, it should be remembered it has its own unique considerations such as distinctiveness and common usage. These criteria are amongst the most difficult in the process, and further assistance should be sought in the case of uncertainty. If guidance is needed in registering a business name as a trademark,  contact one of LegalVision’s intellectual property lawyers on 1300 882 957.

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2017-02-13T09:04:52+00:00

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