Thu 25 Feb 2016 | By:

What Can and What Cannot be Trademarked

What Can and What Cannot be TrademarkedIn my previous article, The Secret of Thriving in a Competitive Industry, you learned a strategy that uses trademarking to create and maintain an important advantage over your competition.

Now, it’s time to get into what trademarks actually are, so that you can understand what can and what cannot be trademarked.

A trademark is a feature unrelated to the characteristics of your products or services which allows your new business to help customers and consumers distinguish your products and services from identical or similar products and services of everyone else.

Let me rephrase it: A trademark can be anything (a name of a product, a name of a service, a logo, a tagline, a sound, a color, a shape, or the look and feel of a product) as long as it has nothing to do with the functionality or features of your products and services and as long as it allows your customers to tell your products and services from the same or similar products and services offered by your competition.

Trademarks are not designed to protect the products or services themselves. They protect that which identifies your product or service and sets it apart from all other similar products and services.

Oh, and if you are the only business on the market that offers your particular product or service, you need to imagine that you have competitors who offer exactly the same products or services that you offer. Will your brand still allow your guests to distinguish your stuff from your competitors’ stuff?

What can and cannot be trademarked flows directly from this function of trademarks: to allow the market to tell your products and services apart from your competition’s.

As I mentioned, pretty much anything can act as a trademark. It can be invented words—for example, Xerox or iPad. It can be dictionary words— like Apple or Windows. It can be a slogan—like I’m Loving It. It can be a logo. It can be a character from a book or a cartoon. It can be the shape of a product— like the Coca-Cola bottle. It can be a color, such as the magenta color of T-Mobile or the red soles of Louboutin shoes. It can be a tune, such as the famous Nokia tune. It can also be just a sound or a noise—like MGM’s roaring lion. Indeed, every time you hear a roaring lion in the beginning of a movie, you don’t even have to look at the screen; you’ll know exactly who made it. This is the function of a trademark.

One important thing is that simply because you have a trademark doesn’t mean you have the monopoly over the word, slogan, or image you chose as your trademark. You only have a monopoly over the association between that word, slogan, or image and the specific goods or services that you offer.

The example I always use is McDonald’s. They don’t own the phrase “I’m loving it” by itself. They own the phrase “I’m loving it” in connection with restaurant services. So if you are a funeral home or a gynecologist, you can safely use or even trademark the same phrase. McDonald’s is not going to go after you for trademark infringement. But I’ll let you be the judge of whether using the phrase for a funeral home or a gynecology practice is a wise business decision.

While knowing what can be trademarked is important, it’s not sufficient. You also need to clearly understand what can’t be trademarked.

You are not allowed to claim the generic name of a product or a service itself as your trademark.

For example, you can’t trademark ACCOUNTING for accounting services. This means you can’t stop other people from using the word accounting to describe their accounting services. Similarly, you can’t trademark BADMINTON for badminton, and you can’t trademark APPLE for apples. Remember, the function of a trademark is to distinguish the apples of different producers, not to give someone the right to say, “I am the only one who can sell apples in Canada.

Next to generic names are “clearly descriptive or deceptively misdescriptive” marks.

In human terms, clearly descriptive means that your trademark is made up of dictionary words (or their phonetic equivalents) which describe some important characteristics of your product or service. For example, you can’t trademark COLOR for printers, or SAFE for cars, or DEL1SHEWZ for apples.

Deceptively misdescriptive means that your trademark is made up of dictionary words (or their phonetic equivalents) that would mislead consumers into believing that your products or services have characteristics that they do not possess. For example, you can’t trademark LEATHUR SHOOZ for shoes that are not made of leather. Likewise, you can’t trademark WYOMING OCEANFRONT PROPERTIES for real estate services.

Unlike clearly descriptive marks, suggestive marks only give some vague idea about the products and services covered by the trademark, and are registrable. Sometimes the boundary between unregistrable clearly descriptive marks and registrable suggestive marks isn’t very clear. This can result in long disputes between applicants and the Trademark Office. Ultimately, it is up to the Trademark Office or the courts to decide one way or the other.

In Canada, while you can use your personal name as a trademark, as a general rule, you can’t register a trademark that consists only of your full name or your last name. For example, JOHN SMITH or SMITH would not be registrable. However, if you combine the name with something else, for example, JOHN SMITH’S ACCOUNTING, it will become registrable.

Furthermore, you can’t trademark something that goes to the functionality of the product itself. Anything that is required in order for the product to function cannot be protected as a trademark. If anything, it should be protected through a patent. For example, Philips’ attempt to protect its three-head shaver through a trademark failed because the court found that what Philips was actually trying to accomplish was to monopolize the market of three-head shavers rather than allow customers to tell Philips’ three-head shavers from three-head shavers of other companies.

Naturally, you can’t trademark something that had already been trademarked in association with identical or similar products and services. Remember my example about I’m Loving It used by a gynecologist from the previous article? I’m oversimplifying here, but the general rule is that if both your brand and your products and services are similar to someone else’s brand, you are not allowed to trademark your brand.

My upcoming article will cover the difference between unregistered and registered trademarks and outline 7 reasons for registering trademarks.

My goal with this series of articles is to cover the basics of trademarking, not to turn you into a trademark professional. As a result, you will be able to confidently identify your trademarking needs and have meaningful conversations with investors, partners, and lawyers. However, it is not designed to turn you into someone who files their own trademark applications. I’m not questioning your ability to draft proper trademark applications—if you spend enough time learning. I’m questioning whether it’s the best use of your time to do your own trademarking as opposed to growing your business.

Trademark Factory® exists for this very reason—to do what we’re very good at and allow you to focus on what you’re very good at. That’s why we are offering a free comprehensive trademark search. Just tell us what brand you want to trademark, and we’ll let you know if it’s trademarkable, for free!

About Andrei Mincov

Andrei Mincov's 20-year career as an intellectual property lawyer began when his father, a well-known Russian composer, caught a radio station stealing his music. At the pinnacle of his Russian career, Andrei moved to Canada, where he founded Trademark Factory®, the only firm in the world that offers guaranteed flat-fee trademarking services. A bestselling author of 5 books, an international speaker, and a visionary, Andrei is passionate about helping entrepreneurs Protect their ideas and cover their assets®.