How to Trademark a Slogan and Protect It From Infringement
Learn how to secure legal protection for a slogan by understanding distinctiveness, registration steps, and how to avoid common trademark issues.
A slogan can be a valuable business asset, defining a brand and connecting with customers. A well-crafted phrase can set a company apart, but without legal protection, competitors might copy or misuse it, weakening brand identity.
Trademarking a slogan grants exclusive rights for its commercial use. This involves meeting specific legal standards and following formal procedures with the United States Patent and Trademark Office (USPTO).
Requirement for Distinctiveness
For a slogan to receive trademark protection, it must be distinctive. This means consumers recognize the slogan as identifying the source of particular goods or services, distinguishing them from competitors. The USPTO assesses distinctiveness based on the slogan itself and public perception related to the offerings.
Trademarks exist on a spectrum of distinctiveness. “Generic” terms, the common names for products (like “Shoe Store” for a retailer of footwear), cannot be trademarked as they don’t point to a specific source. “Descriptive” slogans merely describe a product feature or quality (e.g., “Creamy Yogurt”). These are usually not registrable on their own, as competitors might need similar terms.
Further along the spectrum, “suggestive” slogans hint at a quality but require some imagination to link the slogan to the product (like “Jaguar” for a fast car). These are considered inherently distinctive. “Arbitrary” marks use existing words unrelated to the goods (like “Apple” for computers), while “fanciful” marks are invented words (like “Kodak”). Slogans that are suggestive, arbitrary, or fanciful are inherently distinctive and generally qualify for registration more easily.
Slogans initially considered descriptive can sometimes gain trademark status by acquiring “secondary meaning,” also known as acquired distinctiveness. This happens when, through long-term use and advertising, the public comes to associate the descriptive phrase primarily with one specific source. Proving this typically requires significant evidence showing consumers see the slogan as a unique brand identifier, not just a promotional claim. Slogans often face scrutiny because they can resemble informational messages or advertising puffery rather than clear indicators of origin.
Searching for Existing Marks
Before applying to register a slogan, conducting a thorough search for existing trademarks is essential. This “clearance search” helps determine if a similar slogan is already registered or in use for related goods or services. Skipping this step risks application refusal by the USPTO or potential legal conflicts with existing mark owners. Identifying conflicts early allows for adjustments before investing heavily in branding and application fees.
The main goal is to find marks that could cause a “likelihood of confusion” with your slogan – meaning consumers might mistakenly believe the goods or services come from the same source or affiliated sources. This assessment primarily considers the similarity between the marks (in appearance, sound, and meaning) and the relatedness of the goods or services they identify.
A comprehensive search usually starts with the USPTO’s database, accessible through the Trademark Search system online.1USPTO. Trademark Search (TESS) This system allows searching for federally registered marks and pending applications. The search should include variations in spelling, sound-alike words, synonyms, and similar phrasing, not just exact matches. It’s also crucial to consider the specific goods or services involved, as marks for unrelated products generally don’t conflict unless the earlier mark is very famous.
Beyond the federal database, a thorough search often includes state trademark registers and “common law” uses. Common law rights arise from using a mark in commerce within a specific area, even without registration. These can be harder to find, requiring searches of the internet, business directories, industry publications, and social media, especially within your field and geographic area. Overlooking existing common law uses could lead to conflicts or limit business expansion. Diligent searching is a critical preliminary step.
Filing Steps for Registration
After choosing a slogan believed to be distinctive and available, the next step is applying for federal registration with the USPTO. Applications are filed electronically through the Trademark Electronic Application System (TEAS) via a USPTO.gov account. The application requires details about the mark’s owner, a clear representation of the slogan, and a precise list of the goods or services associated with it.
An application must state a “filing basis,” the legal ground for the application under the Lanham Act (specifically Title 15, Section 1051 of the U.S. Code).2Legal Information Institute (Cornell Law School). 15 U.S. Code § 1051 – Application for Registration; Verification The most common bases are “use in commerce” (Section 1(a)) and “intent to use” (Section 1(b)). Filing under Section 1(a) means the slogan is already being used commercially. This requires providing the date of first use anywhere, the date of first use in commerce (like interstate or international trade), and a “specimen” showing the slogan as consumers see it. Filing under Section 1(b) indicates a genuine plan to use the slogan soon. Registration under this basis cannot be finalized until actual use begins and proof (a specimen) is submitted later via a Statement of Use.
The application must accurately identify the goods and/or services using the international Nice Classification system (45 classes). Selecting the correct class(es) and providing a specific description is necessary. Using pre-approved descriptions from the USPTO’s Acceptable Identification of Goods and Services Manual (ID Manual) is encouraged and can streamline the process.3USPTO. Acceptable Identification of Goods and Services Manual (ID Manual) As of early 2025, the base filing fee is $350 per class.4USPTO. USPTO Fee Schedule Choosing to write a custom description incurs an additional $200 surcharge per class, and lengthy custom descriptions (over 1,000 characters) trigger further $200 surcharges per 1,000-character block per class. Using the ID Manual can offer significant cost savings.
If filing based on “use in commerce,” an acceptable specimen must be submitted with the application. For a slogan, the specimen must show its use as a trademark identifying the source, not just as decoration.5USPTO. Specimens Examples include photos of packaging or labels for goods, or website screenshots showing the slogan near the product with purchase information. For services, advertisements, brochures, or website pages offering the service under the slogan are suitable. The specimen must show the slogan exactly as intended for registration and clearly link it to the goods or services. A slogan merely printed large on a t-shirt might be seen as ornamental, potentially causing issues. Once the application is complete, fees paid, and any specimen attached, it is submitted electronically. The USPTO assigns a serial number, and an examining attorney reviews the application for legal compliance.
Common Refusal Grounds
Once submitted, a USPTO examining attorney reviews the slogan trademark application for compliance with federal law. Several common issues can lead to refusal.
A primary reason for refusal is a “likelihood of confusion” with an existing registered trademark or a mark in an earlier-filed application, based on Section 2(d) of the Lanham Act (Title 15, Section 1052(d) of the U.S. Code).6Legal Information Institute (Cornell Law School). 15 U.S. Code § 1052 – Trademarks Registrable on Principal Register; Concurrent Registration The examiner assesses if consumers encountering both slogans with related goods or services would likely be confused about the source. This analysis focuses on the similarity of the slogans (appearance, sound, meaning) and the relatedness of the goods or services. Significant similarities can cause refusal even if the slogans aren’t identical.
Another frequent obstacle, especially for slogans, is being deemed “merely descriptive” under Section 2(e)(1).7USPTO. Possible Grounds for Refusal of a Mark This happens if the slogan directly describes a feature, function, quality, or purpose of the goods or services (e.g., “World’s Best Coffee”). Such slogans are considered weak because competitors might need similar terms, and consumers may not see the phrase as a unique brand identifier. While sometimes overcome by proving acquired distinctiveness (secondary meaning) through extensive use, or by registration on the Supplemental Register (a secondary list for marks not eligible for the main Principal Register), descriptiveness is a common initial refusal ground.
Slogans might also be refused if primarily geographically descriptive under Section 2(e)(2) (the main significance is a known place, and consumers would likely believe the goods originate there) or primarily geographically deceptively misdescriptive under Section 2(e)(3) (indicates a place, consumers likely believe origin is there, but it’s not). Deception under Section 2(a) applies if the slogan materially misrepresents the goods or services (e.g., “All Silk Scarves” for polyester items). Being primarily merely a surname under Section 2(e)(4) is another ground, though less common for multi-word slogans.
Registration can also be denied if the slogan fails to function as a trademark. This includes “ornamentation,” where the slogan appears merely decorative rather than source-indicating, often an issue with slogans on apparel or novelty items based on size, location, and overall impression.8USPTO. TMEP § 1202.03 Refusal on Basis of Ornamentation Common phrases, widely used messages, or informational statements (like “Drive Safely”) are often refused because the public wouldn’t associate such expressions with a single source; they convey ordinary concepts rather than identifying a specific brand.
Previously, Section 2(a) also barred marks considered “immoral,” “scandalous,” or “disparaging.” However, Supreme Court decisions in Matal v. Tam (2017) and Iancu v. Brunetti (2019) found these specific bars unconstitutional under the First Amendment. While slogans cannot be refused solely on these grounds now, they must still meet all other requirements, like distinctiveness and avoiding confusion. Procedural errors, like incorrect goods/services descriptions or unacceptable specimens, can also lead to refusals but are often correctable.
Renewal Requirements
Federal trademark registration is not permanent; it requires periodic maintenance filings with the USPTO to show the slogan remains in active commercial use. Failure to meet these requirements results in the registration being canceled or expiring, losing federal protection.
The first maintenance filing, a Declaration of Use under Section 8 of the Lanham Act (Title 15, Section 1058), is due between the fifth and sixth year after registration.9Legal Information Institute (Cornell Law School). 15 U.S. Code § 1058 – Duration of Registration; Declaration of Use This requires a sworn statement confirming continued commercial use of the slogan for the listed goods or services, a current specimen showing its use, and the filing fee ($325 per class as of early 2025).
Subsequent maintenance is required between the ninth and tenth year after registration, and every ten years after that.10USPTO. Keeping Your Registration Alive These filings combine the Section 8 Declaration of Use with an Application for Renewal under Section 9 (Title 15, Section 1059).11Legal Information Institute (Cornell Law School). 15 U.S. Code § 1059 – Renewal of Registration This combined filing confirms use and renews the registration for another ten years. It requires a sworn statement of use, a current specimen per class, and the combined fee ($650 per class as of early 2025: $325 for Section 8, $325 for Section 9).
Around the time of the first Section 8 filing (years 5-6), owners of slogans on the Principal Register can optionally file a Declaration of Incontestability under Section 15 (Title 15, Section 1065).12Legal Information Institute (Cornell Law School). 15 U.S. Code § 1065 – Incontestability of Right to Use Mark Under Certain Conditions This is highly recommended if eligible. The slogan must have been used continuously for five years post-registration, with no adverse legal decisions or pending challenges. Incontestability significantly strengthens the owner’s rights, providing strong evidence of the mark’s validity and the owner’s exclusive right to use it, subject only to limited statutory defenses. The Section 15 filing fee is $250 per class (as of early 2025). Many file this with the first Section 8 declaration using a combined form (total fee $575 per class).
The USPTO allows a six-month grace period after the deadline for Section 8 and Section 9 filings. Submitting during this grace period incurs an additional surcharge ($200 per class for Section 8, $200 per class for Section 9, as of early 2025). Missing the grace period deadline is final; the registration will be canceled or expired. Diligent tracking of these deadlines is crucial to maintain protection for a valuable slogan.