WHAT CAN BE TRADEMARKED?
A trademark typically is a name or word, such as a product name or a business name. In the sense of trademark law, a mark is whatever in the marketplace distinguishes goods or services of one source from those of others. In order to be able to claim the symbol ® you will need to register your mark with the Trademark Office.
A trademark can be:
- A logo or symbol, such as the U.S. Steel symbol;
- A number or set of numbers, such as “4711” or “7-Eleven”
- A letter or series of letters;
- A three-dimensional object, such a the Rolls Royce radiator;
- A fragrance;
- An Internet domain name, if used as a trademark or service mark;
- A building;
- A phrase or slogan;
- A color or combination of colors;
- A design of a container for a product, such as the Coca-Cola bottle;
- A sound or series of sounds, such as the
- A flavor or taste
- The name of a series of books or other creative works;
The list is not exhaustive, but functions as an indication of what can be trademarked.
WHAT CANNOT BE TRADEMARKED?
Not all signs can be a trademark, that means not all signs can be registered as a trademark. The Office examines your trademark and stipulates whether it is bared from trademark registration. So the question is what cannot be trademarked? The statute bars registration of marks that are:
- merely descriptive or deceptively misdescriptive;
- primarily geographically descriptive;
- generic (common descriptive names);
- primarily merely a surname (only in the US, not in Europe);
- immoral, deceptive, or scandalous or that may disparage or falsely suggest a connection with persons, institutions, beliefs, or national symbols;
- national insignia such as flags, coats of arms;
- names, portraits, or signatures of living individuals or deceased US presidents during widows’ lifetime without written consent, or
- likely to cause confusion with previously filed or registered trademarks or previously used trade names.
Separately, a sign will not be registered as a trademark if it does not act as a trademark.
- designations that are used as trade names rather than a trademark;
- functional designs such as product shapes necessary for the user or manufacturer;
- background designs;
- designs that are merely ornamental
These cannot be trademarked
- THE TITLE OF A BOOK. In contrast to a series of books, a book title is considered not to be eligible for US federal trademark registration. The same applies to titles of plays. The reason is that the title describes the literary work and cannot serve as a source identifier for registration. If a work enters the public domain others should be able to reprint the work and designate the reprint by its original title. (In Re Posthuman, 45 USPQ2d 2011, 1998 WL 132923 (TTAB) 1998)
- FUNCTIONAL FEATURES OF A PRODUCT. Only patents protect functional features. If there is no patent, then competitors are free to copy such characteristics.
- GENERIC DESIGNATIONS. By their very nature generic terms are not distinctive of goods or services from any particular source. These terms must be free for the competitors and merchants to be used to describe their goods and services.
- COMMON SHAPES AND DESIGNS. Circles, squares and three-dimensional forms, which are common in the marketplace or industry, are deemed to be non-distinctive and thus not trademarks.
- COLOR per se. Color per se is usually not distinctive, but it may become distinctive through use.
- DESCRIPTIVE TERMS. Terms that merely describe the goods or services for which federal trademark registration is sought cannot be trademarked.
- GEOGRAPHICAL INDICATIONS. Geographic terms are not registrable on the Principal Register if they are primarily geographically descriptive (15 USC § 1052 (e)(2).
- SURNAMES. Just as the gives all merchants the right to use ordinary descriptive terminology, it gives merchants the right ti use their own name or the names of their geographic location. Note that personal names as opposed to surnames can be registered.
- SLOGANS. Slogans and other terms, which are considered merely informational in nature, or common laudatory phrases or statements, which would ordinarily be used, in that particular business, trade or industry, are not registrable.
It is part of our service to consult you in regard to the registrability of your trademark.
As part of our service, we will examine your trademark prior to filing it with the USPTO. In the event that we are of the opinion that your trademark is not registrable, we will inform you within our trademark opinion letter and let you know how to overcome the problem. In some instances it is advisable to change the trademark, for example by including a non-descriptive term or to hire a designer to develop a suitable logo of your company or product.
Hucke Law Firm
More than 30 Years of experience in trademark law.