Looking to Protect Your Business? Here's What Can and Cannot Be Trademarked.

Looking to Protect Your Business? 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 entrepreneurial adventures, then you need 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 and maybe even contemplated filing one yourself. After all, trademarks are nothing if not popular — from 2003 to 2019, the number of trademark filings in the U.S. soared from 461,000 per year to more than 1,000,000 per year:

us-trademark-filings

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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 in 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.

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.

Properties that can be trademarked include:

  • Brand names, such as Apple.
  • Phrases/slogans, such as "I'm Lovin' It" from McDonald's.
  • Product names, such as Kawasaki's "Jet Ski."
  • Symbols/logos, such as Nike's swoosh.
  • Colors, such as Tiffany & Co's signature shade of blue.
  • Shapes, such as Toblerone's triangular chocolate bars.
  • Sounds, such as NBC's chimes.
  • Fictional characters, such as Disney's Mickey Mouse.
  • Combinations thereof, such as the color and design of Starbucks' 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:

  • Generic words and phrases, such as "premium," "craft store" or "made in USA."
  • Merely descriptive words and phrases, such as "delicious" or "world's most delicious muffins."
  • Deceptively descriptive words and phrases, such as "real beef dog food" for dog food that doesn't contain real beef.
  • Primarily geographically descriptive words and phrases, such as "Maine lobster."
  • Primarily geographically deceptively descriptive words and phrases, such as "genuine California almonds" for almonds not grown in California.
  • Merely a surname, such as "Williams Roofing."
  • Ornamentation, such as "skills to pay the bills" in large text across a tote bag.
  • Similarity to an existing trademark, such as if you're trying to trademark a phrase that could be easily confused with that of another company in the same field.

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. Clorox).

In such cases you generally have 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' 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

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If 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.

And when you're ready to apply for one, you can streamline the process with help from Incfile. We can assist you with research, legal guidance and paperwork filing so you can rest easy knowing no detail's been overlooked.

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