Each major company or organization has a specific slogan or phrase to help consumers remember them. The current Mercedes-Benz slogan is “The best or nothing”. This phrase helps represent what Mercedes-Benz as a brand stands for. Mercedes-Benz promises to deliver “the best or nothing” through everything they do. Taylor Swift made headlines when she filed trademark applications for several phrases from her “1989” album, including “this sick beat.” Michael Buffer’s phrase, “Let’s get Ready to Rumbol” was trademarked in 1992. And Nike has built its slogan on the trademarked phrase “Just Do It.”
Why trademark a phrase? Trademarking helps ensure that no one else can use a similar phrase to promote similar products or services. It is very simple and good way to compete with your competitors and make your goods and services stand out in market.
When can you trademark a phrase?
Of course big companies and famous people can trademark phrases, but what about other people? Can you just trademark any phrase? The answer is that phrases, like anything else, are subject to certain trademark rules. First, you must use the phrase in commerce, or intend to use it in commerce. That means that you must use it to sell some sort of goods or services. You can’t trademark a phrase just because you like it and don’t want anyone else to say it.
Second, when you file a trademark application, you must identify the types of goods or services that you want to use your trademark on. In order to protect your applied trademark, your phrase can’t just describe those goods or services – it must be more unique than that. Michael Buffer was granted trademarks to use “Let’s get ready to rumbol” in connection with his activities, events and sports.
Third, you can’t trademark a phrase or trademark a word if it is deceptively similar to a phrase or word that’s already been trademarked for the same type of goods or services. Phrases are deceptively similar if people are likely to be confused about the source of a product or service.
Steps to trademark a phrase in China
Step 1. Creat a phrase to trademark
You can’t trademark a phrase which is not exist. Deeply understand the brand or idea you are trying to promote. Keep your slogan short, memorable, and appropriate for your audience. The most valuable trademarks are those with inherent distinctiveness, such as newly made up words or the use of words not normally associated with each other, for example “为发烧而生” was registered by Xiaomi Technology in China.
You can use a common word or phrase, but be attention that to get a trademark, you need to show that the phrase has a “secondary meaning” that makes your customers remember your products or services differ from other competitors. You should also be able to describe the representation, or how your phrase will look. If you want to add any specific design element to your slogan, that becomes part of the trademark. A combination mark may be more restrictive when your needs change over time.
Step 2: Do a trademark search for your phrase
Same as normal word registration, before you plan to trademark a phrase, you should confirm that nobody has trademarked a same or similar phrase for the same type of goods or services. Check on the offical China trademark Office (CNIPA) online at and search their Trademark Searching System for phrases that are identical or similar to the one you want to trademark.
Step 3: Fill out the trademark phrase application
You can apply online using the CNIPA trademark office Trademark Electronic Application System. You can also fill out and mail a paper application with the help of your own attorney. Your application must include certain information:
The owner of the mark and the name and address for correspondence
Whether you are registering your phrase in standard character format or in special character format. Standard character format protects your phrase no matter what color, font or style you display it in, while special character format protects only a particular font or style. The type of goods or services your mark is used for. “Goods” are things that you sell, while “services” are things that you do for other people. For example, tennis rackets are a good, but tennis lessons are a service. It is important to accurately identify the type of goods or services because if you get it wrong, you can’t change it later. Whether you are filing based on use in commerce or intent to use in commerce. If you are using your mark now, file based on “use in commerce.” If you plan to use it within the next few years, file based on “intent to use.” A picture and specimen of your phrase. If you are registering your phrase as a special character mark, you’ll need to provide a picture or drawing that shows what your phrase looks like. You must also provide a specimen of your phrase. The specimen is a picture of your phrase being used on your goods or services. For goods, your specimen might be a product label or package. For services, it might be a brochure or sign.
Step 4: Submit the application and pay the application fee
As of January 2019, CNIPA charges 500 RMB per class of goods or services registered electronically, included 10 sub classes, and 600 RMB per class of goods and services registered via paper application. It is largely minus the company cost for registration. The fee is non-refundable, meaning that you won’t get your money back if your trademark registration is denied.
Step 5: Respond promptly to CNIPA correspondence
Your trademark application will be assigned for examination for review. If the offical examiner identifies problems with your application, you may receive an Office Action. The Office Action will explain the problem and give you a deadline to resolve it. It’s important to respond within the deadline to avoid having your application denied.
Step 6: Wait for your trademark registration to be approved
Normally, it takes several months for a trademark application to be approved. If there are problems or objections, the process may take longer. While you’re waiting, you can use the symbol “TM” or “SM” with your trademark or service mark.
Step 7: Maintain your trademark
Once your trademark is registered, you can use the registered trademark symbol, ®. You will need to periodically file maintenance documents with the CNIPA to keep your trademark in active status.