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 the obvious decision and you question why they tried. Other times, you may question how they were possibly approved. 

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 see the public filing for it with a quick search. 

There are crazy stories about this throughout the history of trademarks, 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. The trademark litigation attorneys at Emerson Thomson Bennett can explain what you can and can’t trademark.

Trademarks in the U.S.

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. If you file a U.S. trademark application and it is approved, it will only protect your trademark in the United States.

What You Can Trademark

In the United States, a trademark is something that signifies your brand in the U.S. marketplace.  This could be a company name, product name, logo, or slogan. Essentially, anything that helps customers distinguish you from your competitors can be trademarked.

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: These are not generic words but original art and images, or a combination of such. 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.

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

What Will Get Your Trademark Denied?

There are several reasons why a trademark application might be denied:

• Likelihood of Confusion: If your proposed mark is too similar to an existing mark and/or the goods or services are related in a way that could cause consumer confusion, your application may be rejected.
• Merely Descriptive 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 one that is specifically. This is so the trademark doesn’t mislead consumers about the nature, quality, or geographic origin of the goods or services.
• 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 in your trademark, 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.
• Generic Terms: Generic terms or common words for products or services cannot be registered as trademarks because they need to be freely available for public use.
• 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.
• 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.

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. We can help you the best we can to avoid the pitfalls that may make the wrong person decide to deny your trademark claim. You shouldn’t be wasting time on something that isn’t trademarkable. Contact the attorneys at Emerson Thomson Bennett today.