What Can Be Trademarked? A Complete Guide to Eligible Marks
When building a brand, protecting its identity is crucial. One of the most effective ways to do this is through trademark registration. But what exactly can be trademarked? Not every name, symbol, or design is eligible for trademark protection, and understanding the rules will help you secure the legal rights you need to safeguard your business.
In this blog, we’ll break down the different types of marks that can be trademarked, what makes a strong trademark, and how to ensure your mark is eligible for protection.
What is a Trademark?
A trademark is any unique symbol, word, name, slogan, or design that identifies and distinguishes the goods or services of one business from those of others. It acts as a form of brand protection, ensuring that competitors cannot use similar marks that could confuse consumers or infringe on your brand identity.
When you register a trademark, you gain exclusive rights to use that mark for the goods or services specified in the application, and you also gain legal recourse if others try to misuse or copy it.
#What Can Be Trademarked? A Complete Guide to Eligible Marks
Types of Marks That Can Be Trademarked
Let’s explore the different types of marks that are eligible for trademark registration.
1. Words and Phrases (Word Marks)
Word marks are one of the most common types of trademarks. These include brand names, slogans, or even taglines that identify the source of a product or service. Think of iconic brand names like Nike, Coca-Cola, or slogans like “Just Do It”—all of these are word marks.
Key Consideration: The more distinctive the word, the better your chances of obtaining trademark protection. Generic or descriptive words (like “Best Shoes” for a footwear company) are harder to protect unless they acquire distinctiveness over time.
2. Logos and Symbols (Figurative Marks)
A figurative mark includes logos, symbols, or graphic designs that represent a business or product. Famous examples include the Apple logo or the McDonald’s golden arches. Logos are visually distinctive and often easier to protect than word marks, especially if they are original and creative.
Key Consideration: For logos, the design needs to be unique and not resemble any other existing logo in the same industry.
3. Combined Marks (Word and Design)
A combined mark blends both words and symbols. For example, the Starbucks logo includes both the mermaid symbol and the company name, “Starbucks.” Combining these elements can offer broader protection because it covers both the word and the design.
Key Consideration: This is often a smart approach for businesses that want comprehensive protection for their branding elements.
4. Sounds (Sound Marks)
Yes, you can trademark sounds! Sound marks are less common but are used by businesses that have a distinctive jingle or noise associated with their brand. For instance, the MGM lion’s roar or the Nokia ringtone are examples of sound marks.
Key Consideration: The sound must be unique and easily identifiable as belonging to your brand. Generic or common sounds won’t qualify for protection.
5. Colors
In some cases, specific colors can be trademarked, but this is generally limited to cases where the color is strongly associated with the brand. One famous example is the Tiffany & Co. blue box. Color trademarks are more difficult to obtain because they must prove that the color has taken on a distinctive meaning for the product or service.
Key Consideration: A color trademark is typically granted when the color has become synonymous with the brand in the marketplace.
6. Shapes (3D Marks)
Businesses can also trademark shapes, especially when the shape is a significant part of their product’s identity. For instance, the distinctive shape of the Coca-Cola bottle has been trademarked.
Key Consideration: The shape must be non-functional and distinctive to qualify for protection.
7. Packaging and Trade Dress
Trade dress refers to the overall appearance of a product’s packaging or design. This could include elements like the shape of a bottle, the color of the packaging, or the layout of a store. For example, the distinctive red wax seal on Maker's Mark bourbon bottles is protected under trade dress.
Key Consideration: The trade dress must not only be distinctive but also non-functional. If it serves a functional purpose, it cannot be trademarked.
What Cannot Be Trademarked?
Not every mark is eligible for trademark protection. Here are some marks that typically cannot be trademarked:
Generic terms: Words that describe the general category of a product, like “Shoes” for a shoe store, are not eligible for protection.
Descriptive terms: Phrases that merely describe a feature of the goods or services, like “Best Coffee” for a coffee shop, are generally not eligible unless they have acquired secondary meaning over time.
Deceptive or misleading marks: Marks that mislead consumers about the nature or origin of the product cannot be registered.
Government symbols or flags: You cannot trademark national flags, government symbols, or emblems.
Offensive or scandalous marks: Marks that contain obscene or offensive material are not eligible for registration.
How to Choose a Strong Trademark
When creating a trademark, it’s essential to choose one that’s distinctive and memorable. Here are a few tips for selecting a strong trademark:
Fanciful or coined words: Words that are entirely made up, like “Google” or “Kodak,” are the strongest types of trademarks because they have no existing meaning.
Arbitrary words: Real words that are used in an unrelated context, like “Apple” for computers, also make strong trademarks.
Suggestive words: Words that suggest a characteristic of the product without directly describing it, such as “Netflix” for an online streaming service.
The more creative and distinctive your mark is, the easier it will be to protect and defend.
Conclusion
In today’s competitive marketplace, trademarking your brand is an essential step in protecting your business’s identity and reputation. From word marks and logos to sounds and trade dress, many elements of your brand can be trademarked, provided they meet the requirements of distinctiveness and originality.
By understanding what can and cannot be trademarked, you can better protect your brand and ensure long-term success. If you're ready to trademark your brand, consult with a trademark attorney to guide you through the registration process and help you secure the legal rights you need.
At Expert Jurist LLP, we specialize in helping businesses protect their intellectual property. From conducting thorough trademark searches to filing applications and defending against objections, we’re here to guide you through every step of the trademark registration process. Contact us today to safeguard your brand’s identity.
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