Here's What Can and Cannot Be Trademarked

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Here's What Can and Cannot Be Trademarked

There comes a point in every entrepreneur's journey when they start thinking about trademarks. Maybe it happens when they commission their first custom logo, or maybe it's when they switch from a slogan they're not crazy about to one they love.

If you've reached that point in your small business adventure, then it's time to learn what can be trademarked so you can better protect your company's intellectual properties from infringement.

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What Is a Trademark?

If you run your own business, then you've probably heard of trademarks before, and you may have even contemplated filing one yourself.

After all, trademarks are nothing if not popular — between Q4 2019 and Q2 2022, the number of active trademark registrations swelled from just under 2.5 million to nearly 3 million:

uspto-active-registrations

Source

But before we start clearing up what can and cannot be trademarked, let's first define what a trademark actually is.

According to the U.S. Patent and Trademark Office (USPTO):

A trademark can be any word, phrase, symbol, design, or a combination of these things that identifies your goods or services. It’s how customers recognize you in the marketplace and distinguish you from your competitors.

To complicate things slightly, a trademark can refer to both a trademark and a service mark. A service mark is similar to a trademark except that it applies to services instead of goods.

So what's the point of a trademark? As per the USPTO, a trademark can help to:

  • Identify the brand behind your products or services
  • Provide legal protection for your brand
  • Prevent counterfeiting and fraud

Knowing this, it's easy to see why so many trademarks are filed — they can be immensely valuable to businesses looking to protect their brand from copycats and fraudsters.

Things You Can and Can't Trademark

What Can Be Trademarked?

Given the benefits that trademarks provide, it would be understandable if businesses trademarked everything they created. But unfortunately, trademarks can only be used to protect certain things, and they must be unique.

Here are the properties that can be trademarked, along with a few real-life examples:

  • Brand names
    • Apple, Microsoft and Ford
  • Phrases/slogans
    • McDonald's "I'm lovin' it," Capital One's "What's in your wallet?" and Skittles' "Taste the rainbow"
  • Product names
    • Kawasaki's "Jet Ski," Pfizer's "Listerine" and 7-Eleven's "Slurpee"
  • Symbols/logos
    • Nike's swoosh, Chanel's double C monogram and NBC's peacock
  • Colors
    • Tiffany & Co's signature shade of blue, John Deere's combination of green and yellow and Post-it's yellow hue
  • Shapes
    • Toblerone's triangular chocolate bars, Hershey's conical Kisses and Weber's kettle-shaped grills
  • Sounds
    • the roar of MGM's lion, NBC's chimes and Nokia's classic ringtones
  • Fictional characters
    • Disney's Mickey Mouse, Planters' Mr. Peanut and Marvel's Captain America
  • Combinations thereof, such as the color and design of Starbucks' green mermaid logo, Google's distinctively multi-colored logo and 20th Century Fox's orchestral fanfare playing behind its logo

As you can see, trademarks can be applied to many aspects of a company's branding.

If you're interested in using trademarks to protect your small business, it's often wise to start by filing them for properties you know can be covered, such as your company's unique name, logo and slogan.

Just remember to conduct a thorough trademark search first to ensure that your desired trademark (or one very similar to it) hasn't already been filed by someone else.

What Things Can You Not Trademark?

There's a limit to what can be protected by trademark, and some people learn this the hard way when their trademark filing is rejected by the USPTO.

To avoid becoming one of those people and making costly trademark mistakes, be sure to familiarize yourself with the properties that cannot be trademarked. Here they are, along with examples:

  • Generic words and phrases
    • "genuine," "craft store" or "made in USA"
  • Merely descriptive words and phrases
    • "delicious" or "world's most delicious muffins"
  • Deceptively descriptive words and phrases
    • "real beef dog food" for dog food that doesn't actually contain real beef
  • Primarily geographically descriptive words and phrases
    • "Maine lobster," "Florida oranges" or "New York Pizza"
  • Primarily geographically deceptively descriptive words and phrases
    • "Wisconsin Signature Creamery" for dairy products not produced in Wisconsin
  • Merely a surname
    • "Brown's Automotive" or "Smith Antiques"
  • Ornamentation
    • "live, laugh, love" printed on a pillow
  • Similarity to an existing trademark
    • Trying to trademark a phrase that could be easily confused with that of another company in the same field

So what phrases cannot be trademarked? The answer is any phrase that is generic, merely descriptive, deceptive, based only on a surname or place, purely ornamental or similar to another trademark.

What If You Want to Use Someone's Trademark?

While we're on the topic of things you can't trademark, let's talk about what to do if you want to use someone's trademark. For instance, you may want to sell merchandise that features a trademarked character (e.g., Elmo) or logo (e.g., Coca-Cola's).

Or, you may want to demonstrate how your brand performs in comparison to a competitor with a trademarked name (e.g., your household cleaner vs. Lysol).

In cases such as those, you can generally choose between two options:

  1. Ask for permission, sign a licensing agreement and pay any requisite licensing fees.
  2. Use the property under the fair use doctrine, such as for criticism, commentary or educational purposes.

Whatever route you take, just be sure that you're within your legal limits beforehand. If you don't, you might find yourself in hot water and possibly even liable for trademark infringement damages.

Should You File a Trademark?

So when should you start filling out a trademark application to protect your business's intellectual properties? That all depends on the potential strength of your trademark.

As the USPTO explains, the strongest trademarks are fanciful (e.g., "Kodak" to describe a camera company) or arbitrary (e.g., "Galaxy" to describe a smartphone). On the other hand, the weakest trademarks are generic names that aren't unique to any company or product.

strong-vs-weak-trademarks-1If the property you're considering trademarking falls on the strong side of the spectrum, then a trademark may be just what you need to protect the brand you've worked so hard to create.

But what if the property you want to trademark falls on the weak side of the spectrum? No worries — as long as you change it to be stronger, you can still get a trademark.

For instance, if you have a business named "Texas BBQ," it will be considered primarily geographically descriptive and thus won't be eligible for a trademark.

So, you can simply add a word or two to make it unique and trademark-worthy — "Lilian's Texas BBQ" or "Pecan & Prairie BBQ" might be acceptable alternatives.

Ready to Protect Your Biz with a Trademark?

When you're ready to apply for a trademark, we can help you streamline the process. With Incfile's trademark registration service, we'll assist you with research, legal guidance and paperwork filing so you can rest easy knowing no detail's been overlooked.

Worried About the Costs of Trademark Registrations? Imagine the Cost of Not Doing It!

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