The Possibilities Are (Practically) Limitless: Names, Phrases and Even Colors
Under US law, practically everything can be registered as a trademark, as the protection only applies in a particular context. The primary restriction is that the trademark cannot be functional; that is, it cannot affect the performance of the goods it’s applied to. For example, while it may be possible to trademark eyeglass frames of a particular color, eyeglass lenses with a particular tint cannot be trademarked, as the tint directly affects the functionality of the eyeglasses.
Beyond that, the sky's the limit. The USPTO and the courts have authorized many trademarks that seem almost bizarre. Examples include the shape of a Coca-Cola bottle and the NBC jingle. Even simple colors can be trademarked, as per the Supreme Court ruling in the case of Qualitex dry cleaning equipment.
Not All Trademarks Are the Same
However, not all trademarks are created equal. The extent of intellectual property protection depends on how strong the trademark is, which in turn depends on its distinctiveness.
- Arbitrary and fanciful trademarks are at one end of the spectrum; they are highly distinctive, even if they are common words. A perfect example is Apple's trademark, which is considered arbitrary and fanciful due to the context (electronics and software) it is used in.
- Suggestive terms enjoy broad protection, but to a lesser degree than arbitrary trademarks.
- Descriptive and generic terms are generally not protected under trademark law and cannot be registered. The exception is when a descriptive trademark becomes associated with the company that manufactures the product, rather than with the product itself.
How to Maintain a Trademark
Trademark protection does have limitations. A trademark owner can lose a trademark if it enters common use and becomes generalized. Such was the fate of trademarks such as Nylon, Aspirin, Xerox and Band-Aid. The question often becomes not what can be trademarked, but how can it remain trademarked.
A trademark can be maintained by actively and visibly making efforts to protect it, which may result in its being upheld despite the word entering common use. For example, Google and Adobe have failed to stem the adoption of “to google” as a synonym for searching the web or “to photoshop” as shorthand for modifying images through digital means, but their efforts to protect their trademarks have resulted in continued legal protection for the terms.
Have something in mind that you’d like to trademark and not sure how to do it? Ask a lawyer for help protecting what’s yours.
This article contains general legal information and does not contain legal advice. Rocket Lawyer is not a law firm or a substitute for an attorney or law firm. The law is complex and changes often. For legal advice, please ask a lawyer.