Can You Trademark a Word in the Dictionary
Its a question some entrepreneurs may ask if the word is part of their trade name or a unique part of their company.3 min read
2. Variations in Other Categories
3. Variations of Existing Marks
4. Exclude Competitors
5. Invented Words
Updated November 24, 2020:
"Can you trademark a word in the dictionary," is a question some entrepreneurs may ask if the word is part of their trade name or a unique part of their company. Companies can use words, phrases, and images to make themselves distinguishable from the competition. These phrases, names, and titles can even include words that come from the dictionary. When properly trademarked, these words will be protected under trademark law.
When you register your word with the appropriate state agencies and the U.S. Patent and Trademark Office, you will obtain additional protection of your trademark both in state and federally. You can also use the variation of a word to take advantage of the opportunity, though this can sometimes cause problems during the process.
Being able to trademark a word or the variation of the word will largely depend on the likelihood that it can be confused with a current trademark. If the word is a variation of a common term that makes it a unique identifier to the line of goods or services, then the likelihood of achieving a trademark increases. Typically if the variation only changes the spelling, it may not fare as well.
When submitting a trademark, it will be placed in one of four primary trademark categories. These categories are:
- Fanciful or arbitrary marks.
The trademarks that are usually considered the strongest are those in the fanciful or arbitrary category. Fanciful marks refer to marks that are invented and have no known meaning. An arbitrary mark refers to actual words that have no real association with the marked product or service. An example of a fanciful trademark would be Xerox, and an arbitrary one would be Apple.
Some category examples would be:
- Generic - Computer for computers.
- Descriptive - Green for apples.
- Suggestive - Chicken of the Sea for tuna.
- Arbitrary - Apple for computers.
- Fanciful - Kodak for camera equipment.
There is a chance that a word violation could count as both an arbitrary or fanciful mark. For example, a company could use the name Gorilla Gourmet as an arbitrary mark, but use other variations such as G'rilla Gourmet using a play on the word grill. This would make it both arbitrary and fanciful.
Variations in Other Categories
Two other types of marks are suggestive marks and descriptive marks. With a suggestive mark, the trademark will not necessarily describe the product or qualities of it, but it suggests it. Variations of suggestive marks are often used to have the mark stand out as a name instead of a phrase, such as substituting the letter "n" for "and."
Trademarks can also be categorized as descriptive marks. These marks are considered weaker as they simply describe the goods or services they represent. These trademarks often fail to gain the legal status of a trademark.
Variations of Existing Marks
Some companies will try to play off of their competitor's ideas by creating trademarks that are variations of another company's original trademarks. This is done to try to make the buyer think that the products or services being sold are an established brand even though the goods are actually knocked-off. In this case, the company using the variation may be liable for damages for trademark infringement.
Since a trademark is to distinguish and identify certain products from others, the mark must allow consumers to identify certain products or services by the mark. Even if you have a trademark, it will not grant you exclusivity to use the word in all circumstances. You can only exclude the competitors from using the mark when it is for similar goods and services. This is so that consumers can tell the difference between the two companies when purchasing a product.
Since distinctive trademarks can sometimes hold the most weight, invented words such as "Pepsi" and "Exxon" are words created by companies' owners. Using invented words can be beneficial as it allows the business to expand beyond common use and improves their chances of finding a distinctive enough word to trademark.
You also have the benefit of being able to make up the meaning of the word as well. This can allow you to tie it in with your products and services. Additionally, you won't have to worry about any alternative meanings that could be conflicting.
If you need help with determining whether or not you can trademark a word in the dictionary, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.