Businesses go to great lengths to protect their brand identity often by filing trademarks at the US Patent and Trademark Office, however not everything qualifies for trademark protection. So, where’s the line between what’s allowed and what’s not? Some applications sail through, while others get rejected for being too generic, too descriptive, or even too bizarre (think “freshly cut grass” for tennis balls).
This is why companies often turn to intellectual property lawyers, not just to file trademarks but to ensure their brand elements stand on solid legal ground. In this blog, we’ll break down what can and cannot be trademarked, helping you understand the rules before you move forward with your brand protection.
Trademarks
A trademark is a unique symbol, word, phrase, or design that identifies and distinguishes the source of goods from those of others. It serves as a brand identifier, helping consumers recognize products from a particular company.
Trademarks protect brand reputation by preventing unauthorized use of similar marks that could confuse customers. They can be registered with the U.S. Patent and Trademark Office (USPTO) for nationwide protection, but even without registration, certain rights are afforded under common law.
Types of Trademarks
Trademarks come in various forms, each serving a distinct purpose in brand identification and protection. Trademark registration offers additional legal benefits, but some protections exist even without formal registration. Understanding the differences between these types can help businesses secure their brand identity effectively.
Registered Trademarks
Registered trademarks are those officially recorded with the USPTO. This registration grants the owner exclusive rights to use the mark nationwide in connection with the specified goods or services.
The ® symbol denotes a registered trademark, signaling to others its protected status. Registration provides legal advantages, including a presumption of ownership and the ability to bring legal action against infringers in federal court.
For example, Nike® is a registered trademark for athletic apparel and footwear, ensuring that no other company can sell similar products under the same name. The circle R ® symbol signals that the trademark is legally protected, discouraging unauthorized use. Registration offers several legal advantages, including a presumption of ownership and the right to file a lawsuit in federal court against anyone accused of infringing on yourmark.
Common Law Trademarks
Common law trademarks arise from the actual use of a mark in commerce, even without formal registration. These rights are established through consistent and public usage of the mark associated with specific goods or services. While common law protection can offer certain rights within the geographic area where the mark is used, it lacks the broader legal benefits of federal registration, such as nationwide protection and presumptive ownership.
For instance, a local bakery named “Sweet Cravings” that consistently uses its name and logo on storefront signage, packaging, and advertisements may develop common law trademark rights. However, these rights are limited to the specific geographic area where the mark is used. Unlike registered trademarks, common law trademarks do not offer nationwide protection and can be harder to enforce in legal disputes.
Service Marks
Service marks function just like trademarks but apply to services rather than products. They help consumers identify the source of a particular service.
For example, Molly’s Maid Service℠ could be a service mark for a home cleaning company, distinguishing it from other cleaning businesses. While people often use “trademark” as a blanket term, the key difference is that trademarks protect goods, while service marks protect services.
Service marks can also be registered with the USPTO, providing the same benefits as registered trademarks, such as nationwide protection and legal advantages in case of infringement.
What Can Be Trademarked in the US?
In the United States, trademarks help businesses protect their brand identity by distinguishing their products or services from competitors. A trademark must be unique, not cause confusion with existing marks, and be used in commerce. Several types of brand elements qualify for registration, provided they meet these criteria.
- Names: A business, brand, or product name can be trademarked if it is distinctive and not too generic or descriptive. For example, “Apple” for electronics is a strong trademark because it is an arbitrary use of the word.
- Logos and Symbols: Unique graphic designs, such as Nike’s swoosh or McDonald’s golden arches, are eligible for trademark protection because they visually represent a brand and help consumers identify its products.
- Slogans: Catchy taglines, like Nike’s “Just Do It,” can be trademarked if they are strongly associated with a particular company and its products or services.
- Colors: While a color alone cannot be trademarked, a specific color scheme associated with a brand can receive protection. For example, Tiffany & Co. has trademarked its distinctive shade of blue, known as “Tiffany Blue.”
- Sounds: Audio branding elements such as jingles, chimes, or even unique sounds can be trademarked. A well-known example is the MGM lion’s roar, which is a registered trademark.
- Scents: A distinct smell that does not serve a functional purpose can be trademarked. For example, a brand that uses a unique scent for its retail stores to create a signature customer experience may qualify for protection.
The distinctiveness of a mark plays a key role in its eligibility for trademark registration. Fanciful, arbitrary, and non-suggestive marks typically receive stronger protection than descriptive or generic terms.
What Cannot Be Trademarked?
Not all words, symbols, or branding elements qualify for trademark protection. Certain categories are generally ineligible because they fail to meet the distinctiveness requirement or conflict with public interest.
- Generic Terms: A word that is commonly used for a product or service cannot be trademarked. For example, a company cannot trademark the word “Laptop” for computers because it is a general term used by all manufacturers.
- Descriptive Terms: Words that simply describe a product or service without acquiring a secondary meaning are not eligible. For instance, “Cold and Refreshing” for bottled water would likely be rejected because it describes the product’s qualities rather than distinguishing its brand and the source of the goods. However, if a descriptive term gains recognition as a brand over time, it may qualify for trademark protection.
- Deceptive Marks: Trademarks that mislead consumers about the nature, quality, or origin of a product or service are not allowed. For example, using the name “Organic Pure Honey” for a product that contains artificial ingredients would be considered deceptive and rejected.
- Surnames: Last names alone are generally not eligible for trademark protection unless they have gained widespread recognition as a brand. For example, “McDonald’s” has trademark protection because it has built strong brand identity over time, but a lesser-known surname like “Johnson” would not qualify unless it becomes widely associated with a product or service.
- Geographical Names: If a name primarily describes a place rather than a brand, it cannot be trademarked. For example, “California Wines” for a company selling wine from California is too geographically descriptive and lacks uniqueness. However, if a geographical term develops a distinct association with a particular brand, it may qualify.
- Immoral or Scandalous Matter: The USPTO does not allow trademarks that contain offensive, obscene, or scandalous content. While trademark laws have evolved over time, marks that are widely considered offensive to public decency still face rejection.
Trademark Registration Process in California
Securing a trademark in California helps businesses protect their brand identity within the state. While federal registration provides broader protection, California’s state-level trademark registration is a valuable option for companies operating primarily within its borders.
A registered mark prevents others from using similar identifiers that could cause confusion among consumers. Understanding the process ensures a smooth application and strengthens legal rights over a brand’s name, logo, or slogan.
Steps to Register a Trademark in California
- Conduct a Trademark Search
Before filing an application, it’s important to check if the desired mark is already in use. Searching the California Secretary of State’s database, along with other public records, helps avoid conflicts and potential legal disputes. - Prepare and File the Application
The application must include the mark’s design, the goods or services it represents, and the date of first use in commerce. Applicants must also submit a specimen showing how the mark is used in business. - Examination and Review
The Secretary of State’s office reviews the application to confirm compliance with trademark laws. If any issues arise, the applicant may need to clarify details or submit additional documents. - Approval and Registration
Once approved, the trademark is registered and provides exclusive rights to use the mark within California. Registration is valid for five years and can be renewed if the mark remains in use.
A trademark attorney can guide businesses through this process, ensuring their application meets all legal requirements and reducing the risk of rejection.
The Importance of Hiring a Trademark Expert
Registering a trademark is just the beginning—businesses must also protect and enforce their rights. Many applications are denied due to improper classification, weak descriptions, or existing similar marks.
A trademark lawyer helps navigate these complexities and safeguards a brand from infringement. They can also help with the following:
- Ensure a Strong Application
Many businesses assume that simply submitting an application guarantees approval. However, trademarks must meet specific legal standards. A professional can help craft a strong application that reduces the risk of rejection. - Handle Legal Challenges
If the application faces objections or opposition from another party, an expert can respond effectively and defend the mark. - Monitoring and Enforcement
A registered trademark is only valuable if properly enforced. Businesses must actively prevent unauthorized use, and trademark attorneys assist in taking legal action when needed.
Protect Your Brand with Heimlich Law PC
Trademark registration is a key step in securing a company’s identity, but the process requires careful attention to detail. Heimlich Law PC provides expert legal support for businesses looking to register, maintain, and protect their trademarks.
Whether applying for a new mark or handling a legal dispute, our team ensures your brand remains protected under California law. Contact us today to discuss your trademark needs.
