What can be Trademarked?

What can be registered as a trademark?

Entrepreneurs are generally aware of trademarks and the purpose for which they are used: serving as a unique identifier of a business's goods and services. However, the rules that govern what can be "trademarked", or more accurately, what can function and be registered as a trademark are not widely known. There are a couple of ways categorize trademarks:

(1) The form of the mark. Trademarks encompass a wide array of identifying elements including words, logos, symbols, colors, and even sounds that distinguish one company's products or services from those of others.

(2) The distinctiveness and strength of the mark. The more distinctive the mark and the less descriptive of the goods and services offered under the mark, the stronger the mark.

The United States Patent and Trademark Office (USPTO) is responsible for the registration and protection of trademarks in the United States, and is thus the arbiter of what qualifies as a trademark. Understanding (1) what can be properly used and registered as a trademark, and (2) what is a strong trademark allows business owners and entrepreneurs to establish strong brand identity and secure valuable trademark protection.

Types of Trademarks

A trademark is a distinctive sign or indicator used by a business to identify and distinguish its products or services from those of other companies. Various elements can serve as a trademark, provided they meet the necessary criteria of distinctiveness and non-functionality. Below are some forms of trademarks along with famous examples for each:

Words

Words are the most common type of trademark. They can be single words, multiple words, or phrases used to identify a product or service. For instance, "Google" is a trademark for the well-known search engine company, and "Nike" is a trademark for the global sportswear brand. The phrase "Just Do It" is also a registered trademark for Nike, demonstrating how phrases can serve as trademarks.

Logos

A logo is a graphic symbol or design that represents a company or product. Logos are often more recognizable than words and can include stylized letters, images, or both. The golden arches of McDonald's and the swoosh of Nike are famous examples of logo trademarks. These logos help consumers quickly identify the products and services associated with these companies.

Letters and Numbers

Single letters or combinations of letters and numbers can also be trademarked, provided they are distinctive. For example, "IBM" is a trademark for International Business Machines Corporation, and "3M" is a trademark for the company known for its innovative products like adhesives and tapes.

Shapes

Shapes can function as trademarks if they are distinctive and identify the source of a product or service. For example, the simple target shape used by the Target Corporation is a registered trademark. Similarly, the three stripe logo of the Adidas AG company is trademarked, helping it stand out among other athletic apparel companies.

Colors

Colors can be trademarked when they are used in a distinctive manner to identify and distinguish a product or service. For example, Tiffany & Co. has trademarked the specific shade of robin's egg blue used in its packaging and marketing materials.  Color can serve as a trademark, but it cannot be inherently distinctive, as noted in Qualitex Co. v. Jacobson Prods. Co. In this 1995 Supreme Court case, the Court ruled that color could be protected as a trademark, but only if it had acquired distinctiveness (also referred to as secondary meaning) in the minds of consumers. Consumers must associate the color with the source of a particular product or service for protection under the Lanham Act. Furthermore, a color mark must be non-functional, meaning it cannot provide a utilitarian advantage to the product itself. In Wal-Mart Stores v. Samara Bros., the Court reinforced the principle that color and product design cannot be inherently distinctive and must acquire secondary meaning to be eligible for protection

Sounds

Sounds can serve as trademarks when they are distinctive and associated with a particular source. For example, the NBC chimes, consisting of the notes G, E, and C, are a registered sound trademark. The lion's roar used by Metro-Goldwyn-Mayer (MGM) in its movie openings is another well-known sound trademark. Unlike colors, sound marks are often considered inherently distinctive because they tend to serve as clear source identifiers, much like traditional word or symbol marks. Sound marks do not typically require evidence of secondary meaning to be registered, as they are more naturally associated with the origin of a product or service.

Scents, Flavors, and Tactile Marks

Although less common, scents can be trademarked if they are distinctive and non-functional. For example, the scent of Play-Doh, which has a unique combination of vanilla, cherry, and other fragrances, is a registered trademark.  These marks present unique challenges as they are generally not inherently source-identifying and require substantial evidence of secondary meaning. Courts have recognized scent, flavor, and tactile marks, but their conceptual distinction from traditional packaging or product design makes them harder to categorize. For instance, the USPTO requires that scent and flavor marks demonstrate secondary meaning before registration. However, these marks can often be functional. For example, in In re N.V. Organon, the Trademark Trial and Appeal Board (TTAB) found that the orange flavor of a pharmaceutical pill was functional because it made the medicine more palatable, serving a utilitarian purpose.​Consequently, these types of marks often struggle to satisfy the non-functionality requirement.

Motions

Motion trademarks involve the movement of a logo or symbol that is used to identify a company or product. For instance, the animated lamp that hops across the screen in Pixar's logo is a registered motion trademark. Motion marks have been recognized and registered by the USPTO, particularly when they are part of a traditional logo or trademark displayed in a digital or televised context. These marks, such as a distinctive way a car door opens or the NBC peacock logo in motion, can serve as source identifiers when they have either inherent distinctiveness or acquired distinctiveness. Some motion marks fall into a grey area between product design and marketing techniques. For example, cases involving marketing strategies, like a hotel using live ducks to walk across a red carpet, blur the line between trademark protection and marketing theatrics.

Combination Marks

Combination marks involve a mix of words, logos, and other elements to create a distinctive trademark. The Starbucks logo, which includes both the stylized image of a mermaid and the company's name, is an example of a combination mark.

To register any of these forms of trademarks, an application must be filed with the United States Patent and Trademark Office (USPTO), detailing the specific use of the trademark in commerce. Once approved, these trademarks help protect the brand identity of a company and prevent unauthorized use by others, ensuring that consumers can reliably identify the source of the products or services they purchase.

Service Marks

Similar to trademarks, service marks identify and distinguish the source of a service rather than a product. The term "trademark" is often used interchangeably with "service mark," but it is important to recognize the distinction. Examples of service marks include "FedEx" for delivery services and "McKinsey & Company" for consulting services. Service marks are eligible for registration and protection under the same principles as trademarks.

Strength and Distinctiveness of a Trademark

Trademarks can be categorized based on their distinctiveness, which is essential for the registration and protection of the mark. The USPTO classifies trademarks into four main categories: fanciful marks, arbitrary marks, suggestive marks, and descriptive marks, which are listed in descending order of strength. Each category varies in terms of strength and registrability.

Fanciful Marks

Fanciful marks are coined terms that have no existing meaning outside their use as a trademark. These marks are inherently distinctive and often considered the strongest type of trademark. Examples include "Xerox" for photocopiers and "Kodak" for cameras. Since fanciful marks are unique and created specifically for the brand, they are easily registered and provide strong trademark protection.

Arbitrary Marks

Arbitrary marks use common words in an unrelated context to the products or services they represent. These marks are also highly distinctive and strong trademarks due to their non-descriptive use. An example of an arbitrary mark is "Apple" for computers. The word apple does not express the quality, characteristic, or nature of a computer, is not descriptive of computers, and arbitrary is thus arbitrary as a trademark for computers. The strength of arbitrary marks lies in their ability to stand out and create a unique brand association, making them easier to register and protect.

Suggestive Marks

Suggestive marks hint at or suggest the nature or characteristics of the products or services without describing them directly. These marks require consumers to use their imagination to connect the mark with the product or service. For example, "Netflix" suggests streaming movies and TV shows but does not directly describe it. Suggestive marks strike a balance between distinctiveness and descriptiveness, making them relatively strong and easier to register than descriptive marks. The USPTO recognizes the creativity involved in suggestive marks, which often leads to successful trademark registration.

Descriptive Marks

Descriptive marks directly describe a characteristic, quality, or feature of the goods and services on which they are used. Examples include "Best Buy" for retail stores or "Creamy" for a dairy product. Descriptive words are generally not eligible for registration on the USPTO principal register. There are other kinds of terms that are also considered descriptive, including:

1. Geographically descriptive terms - For example, "California" is geographically descriptive for a California-based business, and "Rocky Mountains" is geographically descriptive for a Colorado-based business.
2. Entity designations - "Inc.", "Co.", and "LP" are considered descriptive of the source of the goods or services, as they describe the nature of the legal entity providing the goods or services.
3. Common laudatory terms - Terms like "best", "premium", and "fast" are commonly used to provide some cache to the product or service, but are so commonly used that they are treated as if they are generally descriptive of any product or service.

Common surnames like "Johnson", "Smith", or even rarer ones like "Brinkley" are also treated as equivalent to descriptive terms, as they are commonly held names. None of these forms of marks can be registered on the principal register, unless they acquire a secondary meaning. Alternatively, a descriptive term or mark can be registered on the supplemental register if it has not yet established secondary meaning. The USPTO supplemental register carries fewer rights than the principal register, most importantly the presumption of nationwide trademark rights.

Distinctiveness and Secondary Meaning

Secondary meaning occurs when the public associates the descriptive term with a specific source rather than the product or service itself. Secondary meaning arises when consumers recognize the mark as identifying a specific source rather than just describing the product or service. Establishing secondary meaning typically involves demonstrating extensive use, advertising, and consumer recognition over time. Although a trademark application for a descriptive mark can eventually be approved, descriptive marks are inherently weaker than fanciful, arbitrary, or suggestive marks.

Generic Terms

Generic terms refer to common names for products or services and cannot be trademarked. For example, the term "computer" cannot be registered as a trademark for computer products because it is the generic name for the goods. The USPTO does not grant trademark rights for generic terms, as doing so would prevent other businesses from using the necessary terminology to describe their products or services.

Importance of Trademarks

Trademarks play a crucial role in building and protecting brands, customer loyalty, and business success. They provide legal protection against infringement and help distinguish a company's products or services in the marketplace. Registered trademarks offer several benefits, including:

1. Exclusive Rights: Trademark registrant have a presumption of exclusive nationwide rights to use the mark in connection with their goods and services.
2. Legal Protection: Registration with the USPTO provides legal grounds for enforcement against infringing uses.
3. Brand Recognition: Strong trademarks contribute to brand recognition and consumer trust.
4. Business Value: Trademarks can enhance the overall value of a business and can be valuable assets in mergers, acquisitions, and licensing agreements.

Trademark Protection and Enforcement

Trademark protection extends beyond registration. Trademark owners must actively monitor and enforce their rights to maintain the strength and exclusivity of their marks. This includes taking action against unauthorized uses and protecting the mark from becoming generic. Trademark infringement occurs when another party adopts a mark that is confusingly similar to a pre-existing trademark, which is likely to cause or actually causes consumer confusion. Trademark owners can seek legal remedies, including injunctions and damages, to protect their rights.

Intellectual Property and Trademarks

Trademarks are a vital component of a company's intellectual property portfolio, alongside patents, copyrights, and trade secrets. They contribute to the overall value and competitive advantage of a business. A well-managed intellectual property strategy includes securing and enforcing trademarks to protect the brand and ensure long-term success.

Conclusion

Understanding what can be trademarked is essential for businesses aiming to establish and protect their brand. The trademark registration process with the USPTO provides significant benefits, including exclusive rights and legal protection. Trademarks, as part of a broader intellectual property strategy, play a crucial role in building and sustaining a successful business. By selecting a strong mark (e.g., a fanciful, arbitrary, or suggestive mark) and avoiding descriptive and generic terms, a businesses can build a strong brand and maintain an edge over competitors offering similar products and services in the marketplace.