Key Takeaways:

  • What Can Be Trademarked: Distinctive words, symbols, phrases, colors, and even sounds or scents can qualify for trademark protection if they distinguish goods/services in commerce.
  • What Cannot Be Trademarked: Items include generic terms, government symbols, and anything immoral or deceptive.
  • Types of Trademarks: Include standard trademarks, service marks, collective marks, certification marks, and trade dress.
  • Trademark Importance: Provides legal protection for unique branding, enhances market presence, and prevents infringement.
  • Trademark Registration Process: Involves applying through the USPTO, with a 10-year renewal requirement to maintain protection.
  • Domain and Online Protection: Domain names and cybersquatting laws offer additional protection for trademarks in digital spaces.

What Can Be Trademarked?

A phrase, word, symbol, device, or even a color are all eligible for a trademark. Anything that distinguishes the goods of your party or company from another qualifies. However, the item must be used in a commercial setting to obtain protection from the law. Trademarks have a 10-year protection span.

Trademark are important to:

  • Distinguish your company from others
  • Indicate the source of goods
  • Distinguish your service from others
  • Give permission to other companies for cobranding
  • Indicate a membership in a union

A trademarkable symbol also lets customers know who you are. This is especially important when two companies in the same industry have a similar name, for example.

The three types of trademarks include:

  • Trademarks and Service Marks: These phrases, words, or symbols define a company's goods or services. However, a service mark indicates a service, while a trademark indicates a good.
  • Collective Marks: These are just like trademarks, except they identify a greater group. With collective marks, members of a group can profit from a single trademark.
  • Certification Marks: These marks cover the characteristics of a product. For example, if something is 100 percent cotton, it could fall under a certification mark.

It's important to note that just because you have a trademark doesn't mean you own a monopoly regarding your symbol, logo, or name. You only control the interest over that name or logo and the association between your goods or services. For example, McDonald's may have a slogan that says "I'm Lovin' it," but if you were to use it in an industry outside of food service, they wouldn't attack you for trademark infringement.

The hardest trademarks to register include:

  • Descriptive names that can't be distinguished from those of other products
  • Names that include a geographic location, such as California Pizza Kitchen
  • Generic names
  • Deceptive names
  • Surnames pertaining to a product

However, remember that there may be exceptions to the rule.

Examples of Non-Traditional Trademarks

A trademark is not limited to words and symbols; it can include:

  • Sounds: Distinctive audio identifiers, like the NBC chimes, can be trademarked.
  • Scents: Unique smells associated with a product can qualify if they are not functional.
  • Colors: Specific shades tied to a brand, such as Tiffany Blue, may be trademarked.
  • Shapes and Packaging: Known as trade dress, this includes product designs or packaging that signify the source of goods.

Trademarks must meet distinctiveness requirements to qualify for registration, ensuring they clearly identify the source of goods or services.

What Can't Be Trademarked?

Originally, only goods could be trademarked, but the law now protects both goods and services. However, you can't trademark:

  • Proper names or likenesses without consent from the person
  • Generic terms, phrases, or the like
  • Government symbols or insignia
  • Vulgar or disparaging words or phrases
  • The likeness of a U.S. President, former or current
  • Immoral, deceptive, or scandalous words or symbols
  • Sounds or short motifs. These are covered by copyright instead.

Limitations and Challenges in Trademarking

While trademarks are flexible, they come with limitations:

  • Overused Terms: Excessive use can lead to genericide, where the trademark loses its legal protection. Examples include terms like "escalator."
  • Functional Features: Elements that are necessary for the operation or use of a product, such as a bottle's threading, cannot be trademarked.
  • Potential Conflicts: Applications may be rejected if similar marks already exist, particularly in related industries.

It’s essential to conduct a thorough trademark search to avoid conflicts or infringement issues.

Why Is a Trademark Important?

A trademark protects you by law if someone steals your logo or otherwise infringes upon your idea. However, using an unregistered trademark is still effective. By using the trademark (TM) logo, you can still protect yourself. Any company using a similar logo has to have the burden of proof. As a general rule, an unregistered trademark is effective in a small geographic setting. National companies must register to gain legal protection throughout the country.

Trademark vs. Copyright vs. Patent

Here's the difference between a trademark, copyright, and patent:

  • Trademark: Protects the symbols or words that show the source of goods and services
  • Copyright: Protects artistic works such as books, songs, and lyrics
  • Patent: Protects inventions or alterations to inventions

The main difference of a trademark is that it doesn't have a life span. Trademarks don't have to be renewed or run out of time like a copyright or patent. As long as the trademark person keeps using the symbol, it's trademarked by law.

Legislators also have trade dress in place. This clause states that businesses cannot package goods or services to indicate that the product is from a third-party provider. Coca-Cola bottles and distinctive wrapping or decor fall under this protection. However, this must be non-functional and original to receive protection of the law under the trade dress.

Online Considerations

Under the Anti-Cybersquatting Consumer Protection Law, no one can steal your domain name. If you have a company and someone uses that same name or logo for non-commercial purposes, you're covered. Even Morgan Freeman trademarked his name to take back www.morganfreeman.com, as the site master was found to be using the domain in bad faith.

Distinctiveness

Above all, a trademark must be distinctive to distinguish itself from other companies. There are varying degrees of this, but they include:

  • Descriptive Marks: These directly describe what the product does or a characteristic thereof.
  • Suggestive Marks: These stand for a product, yet don't describe it.
  • Arbitrary Marks: Words common to the English language, yet meant to describe something else. Think Apple.
  • Fanciful Marks: Names that are unique and original, such as Tylenol or Xerox.

Distinctiveness is also important for maintaining a valuable trademark. Over time, the distinctiveness of a trademark may diminish, and this has some serious backlash. If a trademark is used too much, it becomes a generic name for a product. This means the trademark holder has no litigation power if another company uses the product.

A trademark also refers to an entire trademark and not pieces that add up to a total trademark. According to the Paris Convention, a product cannot be trademarked if it:

  • Lacks any distinctive properties or characteristics
  • Consists of signs or designations that define how the product is made
  • Has become customary language in the country of origin

For example, the words "dry" and "baby" can describe diapers, but on their own, they cannot be trademarked because they lack distinctiveness. However, if you put the two together to form a brand called "Baby Dry," it would be a valuable trademark because of its distinctive nature.

The Economic Value of a Trademark

Trademarks contribute significantly to a company’s intellectual property portfolio by:

  • Increasing brand recognition and trust.
  • Providing a competitive edge in crowded markets.
  • Generating revenue through licensing or co-branding opportunities.
  • Safeguarding investments in marketing and branding efforts.

Protecting these assets through timely registration can prevent unauthorized use and preserve market position.

Reasons to Consider Using a Trademark

A trademark is valuable and flexible. Logos, symbols, words, and even colors can be trademarked. The only difference is that the trademark cannot affect the good at hand. For example, you couldn't trademark tinted glasses because the tint directly affects the product.

There are three possible trademark categories in terms of intellectual property:

  • Generic Terms. These typically cannot be trademarked because they don't give the consumer a distinct idea. However, terms can become synonymous with each other for trademarks, such as a tissue and Kleenex.
  • Arbitrary and Fanciful Terms. These are the best types to trademark because they have an obvious distinction from other products.
  • Suggestive Terms. These are the middle ground of a trademark. They enjoy more protection than generic terms but less than fanciful.

Trademark Use Beyond Legal Protection

Trademarks also play a strategic role:

  • Consumer Trust: A strong trademark fosters consumer loyalty and brand advocacy.
  • Franchise Opportunities: Many franchises, like fast-food chains, leverage trademarks as a core business model.
  • Market Expansion: Registered trademarks can facilitate international business through treaties like the Madrid Protocol.

How Do I Apply For a Trademark?

Because a trademark registration can take nine months to a year, it's important to start early. To apply, simply enter your application to the U.S. Patent and Trademark Office. You'll have to select a class on your application. However, their website allows you to type in your business to achieve a class number to file. Accepted trademarks have the protection of the law for 10 years. There's no limit to how many times you can refile.

Company name, logo, and symbol all must have separate applications. If you only have the means to file one, make sure it's a standard character claim. This asserts your trademark covers a company name no matter what font is used. This does not, however, protect logos.

What Happens After You Apply?

After submitting your application:

  1. Examination Period: USPTO reviews for accuracy, completeness, and potential conflicts.
  2. Publication: If approved, the mark is published for opposition in the Official Gazette.
  3. Opposition Phase: Third parties may object to your registration within a specific timeframe.
  4. Final Approval: If unopposed, the trademark is registered, and you'll receive a certificate.

Maintaining your trademark requires periodic filings and proof of use in commerce to ensure ongoing protection.

Get Your Trademark Today

Before you try to obtain a trademark, make sure to:

  • Research to see if your trademark is already taken.
  • Research the Anti-Cybersquatting Act of 1999.
  • Register a domain name early.
  • Use a "TM" until you get registered.

Frequently Asked Questions

1. Can I Trademark a Phrase? Yes, if the words have a distinctive meaning. However, the burden of proof for this is on the person trying to get the trademark.

2. Am I the Only One That Can Use My Trademark? Other companies can use your trademark if they sell different goods or services. Companies in the same industry sometimes do this to trick the consumer. When someone's use of your trademark confuses a consumer, this is infringement. However, large companies can issue cease and desist orders across all industries as they are considered household names.

3. What's Up With ® and ™? The ™ only shows that someone claims their symbol or logo is a trademark. However, it hasn't been registered with the U.S. Patent and Trademark Office. A ® means the symbol has been registered, so no one can use similar images for commercial use.

4. What If Someone Still Uses My Trademark? You only have legal right to sue someone if they're using your logo for a similar idea or service. In most cases, a lawyer would draft and send a trademark cease and desist letter. If that doesn't deter the other party, you'd have to file suit in federal court. However, legal action is one of the best reasons to get a trademark.

5. How Do I Protect My Trademark? At the least, renew it every 10 years. You also have to keep it visible and relevant as long as you have the trademark registered.

6. What are non-traditional trademarks? Non-traditional trademarks include sounds, scents, colors, and shapes, provided they are distinctive and non-functional.

7. Can a trademark expire? Yes, trademarks must be renewed every 10 years to maintain their legal protection.

8. What is trade dress in trademark law? Trade dress refers to the visual appearance of a product or its packaging that signifies its source, such as Coca-Cola’s bottle design.

9. How do I protect a trademark internationally? You can apply through the Madrid Protocol, allowing trademark protection across multiple countries with one application.

10. What if my trademark application is denied? You may amend your application or appeal the decision through the Trademark Trial and Appeal Board (TTAB). Consulting a trademark attorney can increase your chances of success.

The most important thing you can do if you have an original trademark idea is to get it registered. If you have any issues about trademark registry, make sure to contact the professionals at UpCounsel. You can click here to post your legal need and receive free custom proposals covering trademark law from the top 5% of lawyers. 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 such as Google, Menlo Ventures, and Airbnb.