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what can you trademark

What Can You Trademark? The Scope and Limits of Trademark Law

By John DiGiacomo

You’ve got the next big idea for an online business. The idea that’s going to spark a revolution and change lives. The only problem? Protecting your idea. That’s where a trademark can help. But if you’re still wondering, “What can you trademark, anyway?” you may not have the first clue where to begin.

Here, we’re breaking down everything you need to know about trademarks, how they work, what can and cannot be trademarked, and why your business needs one. If you want to set your business up for success, keep reading.

The Basics

You might think that you know what a trademark is. But the truth is, most people scramble together the concept of trademarks with copyrights and patents–but all three are different, distinct concepts and are used to protect different forms of intellectual property.

What is a Registered Mark?

A trademark is a recognizable symbol or phrase denoting a specific product and legally differentiating it from other products.

The easiest example is the Apple logo: a single, minimalist apple with a small leaf and a bite taken out of one side.

Anyone in the world could see that symbol and immediately know what it represents–the Apple company and the Apple family of products.

The word “trademark” is also often used to refer to trademarks and service marks interchangeably. A service mark is a word, phrase, or symbol that identifies the source of a service (rather than a product, which is what trademarks represent and protect).

This is distinct from a copyright (which is used to protect original works such as literature, plays, music, and art) and from a patent (which grants sovereign property rights to the inventor of an original invention).

How Do Trademarks Work?

If a trademark protects a word, name, phrase, or logo which identifies a product, how do trademarks work?

Trademark law is primarily focused on two avenues:

  1. To prevent consumer confusion
  2. To protect a company’s income from a product

It does this by allowing a trademark owner to sue over trademark infringement.

Let’s return to our Apple example. Let’s say that Apple found out that another tech manufacturer was producing phones and selling them as iPhones with the Apple logo but at a significantly reduced price.

That creates consumer confusion, as Apple is no longer the sole producer of Apple products. It also infringes on Apple’s profits from the sale of those products, which they have a legal right to protect.

Because of this, Apple could sue the infringing company for damages.

That said, trademarks aren’t always punitive. Most of the time, a company registers a trademark in order to cement their claim on a phrase, name, or logo and send a signal to other companies that it has already been claimed.

This helps solidify their brand identity by making it easier for consumers to recognize them and make quality associations with their products.

What Can You Trademark?

What Can You Protect?

Trademarks, patents, and copyrights protect different forms of intellectual property. Trademarks specifically protect words, phrases, names, and logos that denote your company or your company’s products.

Generally, they fall into one of four categories:

  1. Fanciful or arbitrary
  2. Suggestive
  3. Descriptive
  4. Generic

The best (and most protectable) trademarks are fanciful or arbitrary. Fanciful marks are invented words without a dictionary meaning or other known definition (such as Kleenex or Google).

Arbitrary trademarks are known words, but they have no apparent association with the protected product (such as Apple, which sells phones, tablets, and computers).

These are the best marks because it’s unlikely that anyone else has already claimed them (or will attempt to claim something similar in the future).

You can get away with suggestive marks (such as Glance-a-Day for calendars) or descriptive marks (which describe the product). However, these will be difficult to protect until they become distinctive. The USPTO will not grant a trademark if they find that your desired mark is merely descriptive–that is, you cannot register a description, per se, which is why descriptive marks are so difficult to protect.

What Trademarks Can’t You Register?

Originally, trademarks were only intended to protect products. That has changed over time to include products and services, but there are some things that still cannot be protected by trademarks.

Examples include things like:

  • Proper names or likenesses without consent from the individual (Keanu Reeves, for example)
  • The names or likenesses of current or former US presidents
  • Vulgar or disparaging words or phrases
  • Immoral, deceptive, or scandalous words or insignias
  • Government symbols or insignias
  • Sounds or short motifs (these fall under the purview of copyright)
  • Scents (Hasbro tried to trademark the scent of Play-Doh without success)

In short, if it seems like a bad idea, it probably is.

Should You Register Your Mark?

With all of that in mind, the question remains: should you register your trademark?

If you hope to protect your brand, the answer is yes.

With a trademark, you are legally protected if someone tries to steal your idea (or does so unwittingly). You have a legal right to sue them and protect your potential profits from your brand name and insignia.

However, you shouldn’t register a mark unless you intend to use it. United States law mandates that a mark must be used in the sale of goods and services in order to be recognized as valid (and you’ll have to show evidence of use in your registration application).

Helping You Master Intellectual Property Law

Our trademark attorneys know what it takes to establish and protect a powerful brand. They have extensive experience in intellectual property law through all stages of the process, from filing to monitoring to prosecuting trademark infringement.

If you need to speak with an attorney about your registration options, click here to email us, or call 855-473-8474.

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