What Can You Trademark?

You might have heard of some celebrities and companies trying to trademark some ridiculous things. When the United States Patent and Trademark Office (USPTO) refuses them, it feels like an obvious decision, and you question why they tried. 

Other times, you can’t believe they were approved, leading you to wonder what can and cannot be trademarked. For example, did you know that Paris Hilton trademarked the phrase, “That’s hot,” over a decade ago? She even had to file a lawsuit against Hallmark over it. While the trademark has been let go since then, you can still find the public filing for it with a quick search. 

There are crazy stories about this throughout the history of trademark law, which begs the question, “What can’t you trademark?” While it may seem like you can trademark anything, there are specific rules that need to be followed for what can be registered as a trademark.

The trademark litigation attorneys at Emerson Thomson Bennett can explain what can and cannot be trademarked, helping you understand your rights and limitations.

Trademarks in the U.S.

Registered trademarks signify your brand identity in the U.S. marketplace—and there are many specifications for what can and cannot be trademarked.

Additionally, while there are services that allow entrepreneurs and business owners to file a trademark for multiple countries at a time, no trademark in one country carries over into another.

Each country has its own trademark laws and registration process, meaning you must apply separately in each jurisdiction where you seek protection. In other words, if you plan to expand internationally, you must secure your rights in those countries, as well.

What Can Be Trademarked?

So, what can be trademarked? It could be a company name, product name, logo, or slogan. Essentially, anything that helps customers distinguish you from your competitors can be registered as a trademark. Other items that can be trademarked include: 

• Phrases: This can be something like a slogan or catchphrase. To go back to the Paris Hilton example, “That’s hot,” was a trademarkable phrase. Other examples include McDonald’s “I’m Lovin’ It,” Subway’s “Eat Fresh,” and Allstate’s “You’re In Good Hands.” 
• Words: When you trademark words, you’re trademarking them in a specific turn of phrase, or as the name of a product or company. You cannot trademark individual words in slogans, products, or business names. The owner of the game Candy Crush – King – failed to trademark “Candy,” not only because it would violate other trademarks in the gaming industry, but also because “Candy” does not signify their product, “Candy Crush” does. 
• Symbols: Symbols are an example of what can be registered as a trademark. These are not generic words but original art and images, or a combination of such. Symbols often become the most recognizable part of a brand, making them a critical aspect of your trademark. You may get denied if you are found to have used copyrighted or trademarked materials in your symbols.
• Devices: In the context of trademarks, devices are visual elements of copyright visuals. This can include logos, symbols, images, designs, shapes, or even a combination of colors, and can be used in any of the previously named visual elements. These elements can distinguish your brand from competitors in a crowded marketplace.

Other Trademarkable Items

Trademarks can also be filed as the items they’re used on if you need to be specific with your trademark to avoid infringing on another. Examples of trademarkable items include: 

• Multimedia signage 
• Packaging designs 
• Sounds 
• Letters 
• Abbreviations
• Numbers

Types of Trademarks

Different types of marks can be registered as a trademark:

1. Arbitrary Marks

Arbitrary marks are common words with no direct connection to the product or service they represent, like “Apple” for computers. These marks are highly distinctive and easier to protect under trademark law but may require significant marketing to build an association with the product.

2. Suggestive Marks

Suggestive marks hint at the nature or quality of the product without explicitly describing it, such as “Netflix” implying entertainment. They balance distinctiveness and consumer recognition, making them strong candidates for trademark protection.

3. Fanciful Marks

Fanciful marks are invented words with no meaning other than as a trademark, like “Kodak” for cameras. These marks are inherently distinctive and offer the highest level of protection but may need more effort to build consumer recognition.

4. Service Marks

Service marks are another type of trademark. While trademarks typically apply to goods or products, service marks are used to identify and distinguish the source of a service rather than a product.

What Can’t Be Trademarked?

There are several reasons why a trademark application might be denied. Let’s go over what can’t be trademarked or will lead to a denial:

1. Likelihood of Confusion

If your proposed mark is too similar to an existing trademark and/or the goods or services are related in a way that could cause consumer confusion, your application may be rejected. Keep this in mind when deciding what can and cannot be trademarked for your business.

2. Merely Descriptive Words or Deceptively Misdescriptive

If the trademark merely describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services, it can be refused. Trademarks that are intentionally vague have a far greater chance of being denied than those that are specific.

3. Surname Issues

A trademark will be refused on the principal register if the primary significance of the mark is a last name or surname, and nothing else. This isn’t to say that you can’t use surnames, but it has to include something more than just your surname. 

If you could just trademark your surname, then you would be able to sue people for being famous and having the same surname as you. It’s again, an issue of being vague in your trademark.

4. Generic Terms

Common, descriptive, and generic terms for products or services cannot be registered as trademarks because they need to be freely available for public use. For example, trying to trademark the word “Milk” for a dairy product would be denied since it directly describes the product, of which there are many brands for.

5. Incorrect Information

Mistakes in the application, such as choosing the wrong class for your trademark or providing the wrong applicant name, can result in rejection. It’s essential to ensure all details are accurate and reflect the intended use of the trademark to avoid unnecessary delays or denials.

6. Ornamentation

If the mark is considered a decorative feature or ornamentation, rather than a trademark identifying the source of the goods, it might be refused. This is because trademarks must serve a functional purpose in identifying and distinguishing the source of a product, not merely adding aesthetic value.

Contact ETB Law to Find Out If You Can Get a Trademark for Your Business

Trademarks are not a science. There’s a lot of interpretation by many different people before it can be approved. Knowing what can be trademarked (and what can’t be trademarked) can feel daunting. 

Moreover, misunderstanding the rules can result in lost time, money, and the opportunity to secure your brand’s future. You shouldn’t be wasting time on what can’t be trademarked. We can help you the best we can to avoid the pitfalls that may make the wrong person decide to deny your trademark claim.

Ready to get started? Contact the intellectual property attorneys at Emerson Thomson Bennett today.