What can be trademarked?
Under U.S. law, practically everything can be registered as a trademark, as long as it identifies a source of goods or services, and is used in commerce. This can include your business name, product names, logos, and more. The primary restrictions on a trademark is that it cannot be generic or descriptive. Generic trademarks use a common word to describe the product, and have no protection under trademark law. An example of a generic trademark is SOAP for a brand of cleaning product. Descriptive trademarks primarily describe a feature, function, purpose or characteristic of the product, and are also very difficult to protect. An example of a descriptive mark is SUDSY for bath soap, because the mark describes a commonly-known feature of bath soap, i.e. that it makes suds or bubbles.
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, the NBC jingle, and even a particular smell for sandals registered by a Brazilian footwear company.
Do all trademarks enjoy the same protection?
Not all trademarks are created equal, and so not all trademarks are entitled to protection. The extent of trademark protection depends on how strong the trademark is, which in turn depends on its distinctiveness. The USPTO often relies on several factors to determine strength. Arbitrary or fanciful marks receiving the most protection, while generic marks cannot be protected at all.
- 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. Fanciful marks are completely made up words such as EXXON, VERIZON, or KODAK.
- Suggestive terms enjoy broad protection, but to a lesser degree than arbitrary trademarks. These marks may suggest an affiliation between the mark and product, but require a mental leap or some imagination from the consumer to connect the two. An example is JAGUAR for cars or COPPERTONE for tanning lotion.
- Descriptive and generic terms are generally not protected under trademark law and cannot be registered. The exception is when a descriptive trademark is used over a period of time (usually at least 5 years) and becomes associated with the company that manufactures the product, rather than with the product itself. In these limited cases, it may be registered with the USPTO.
How can I make sure my trademark remains protected?
Trademark protection does have limitations. A trademark owner can lose a trademark if it enters common use and becomes a generic term for the product. Such was the fate of trademarks such as Nylon, Aspirin, Xerox, and Band-Aid. These trademark names were originally protected but eventually became highly associated in the minds of consumers as a shorthand description for the product, and thus generic, which resulted in a loss of trademark protection.
The question often becomes not what can be trademarked, but how can it remain trademarked. A trademark can be maintained by actively using it in commerce to advertise or sell the product or service. Visibly making efforts to protect it may result in a trademark being upheld despite the word entering common use. For example, the mark should be used as a stand-alone brand name instead of a verb and should clearly use the ® or ™ symbols, i.e. "we recommend a Google ® search engine" rather than "please google this word," or "Adobe's Photoshop® is a premier graphic design software" rather than "I'll photoshop this picture." In these cases, businesses need to be vigilant in policing and enforcing non-authorized use of their trademarks, which would further strengthen their trademark rights. Sending a Cease and Desist Letter is often the first step in the process of stopping unauthorized use.
In practice, Google and Adobe did not stop the adoption of "to google" as a synonym for searching the web or "to photoshop" as shorthand for modifying images through digital means. Nonetheless, they police the use of these terms and continue to use them as proper trademark terms internally. As such, their continued efforts to maintain and protect their trademarks have resulted in continued legal protection for the terms.
Have something in mind that you'd like to register as a trademark and not sure where to start? Rocket Lawyer Trademark Services can help you with the entire process, start to finish. If you need answers to specific trademark questions, reach out to a Rocket Lawyer network attorney for affordable legal advice.
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.