What Can I Trademark: A Beginners Guide

When Americans see swooping white lettering against a red backdrop on a can, they do not need to look closely to know that the can contains Coca-Cola. Similarly, a sign bearing a single large, rounded, yellow letter “M” instantly identifies the establishment being advertised as McDonald’s and a logo featuring five interlocking rings in distinct colors is easily recognizable as the symbol of the Olympic games. If competing soft drink companies, restaurants and competition organizations were allowed to use the same symbols, wording, fonts, color schemes, graphics, logos and names as Coca-Cola, McDonald’s and the International Olympic Committee, these branding tools may not have become synonymous with their respective companies and the products and services these corporations provide. It is due in large part to trademark law that Americans can view a single logo, hear a word or phrase, process an image or otherwise interact with branding material and instantaneously connect whatever is being advertised with the corporation that has registered a trademark for any given specific branding tool.

Government-issued trademark protections help safeguard the intellectual property rights of companies seeking to distinguish themselves from their competitors and their products from those produced/provided by their competitors. Trademarks help customers to differentiate between companies and products available to them within the broader marketplace. They also help to distinguish companies and products within any given industry. It is important for companies to seek formal trademark protections for any influential branding logos, wording, graphics and other eligible advertising tools they intend to use frequently or in significant ways. Failure to secure proper trademark protection can leave branding vulnerable to infringement and can leave a company vulnerable to liability in the event that a competitor seeks to register a trademark and insists that the original creator is actually infringing upon that company’s intellectual property rights.

Obtaining formal trademark protections is not an easy task. The trademark registration application process is detailed and time-intensive in nature. To add to these complexities, the longer your company waits to secure proper trademark registration, the longer both your company and your branding tools remain legally vulnerable. It is for these reasons that it is so important to seek experienced legal guidance as soon as your company creates branding that is influential enough to warrant a trademark. An attorney will be able to work with you to ensure that, whenever possible, your trademark registration application is accepted by the United States Patent and Trademark Office without any unnecessary delays.


Trademark Eligibility and Types of Trademarks

Generally speaking, any word, phrase, symbol, logo, graphic or other relatively contained advertising device that brands your company and its goods in such a way that it clearly distinguishes your company, its goods and/or its services in the marketplace may be trademarked. Certainly, if your company is interested in trademarking an advertising device that is unusually complex or unconventional, you may need to consult your attorney about whether that device is eligible for traditional trademark registration. But generally, traditional advertising slogans, logos and the like may be trademarked, provided that the device in question does not infringe upon an existing trademark.

It is also worth noting that the owner of a trademark does have the legal authority to grant other companies permission to use that mark in an effort to cobrand. However, this permission must be explicit and legally enforceable. A company may also choose to obtain a collective mark in order to allow multiple members of a connected “group” to benefit from a single trademark. For example, the “CPA” title used by members of the society of certified public accountants is considered a collective trademark. Service marks may be obtained to specifically indicate a branded service and certification marks govern a broad characteristic of a product. For example, if a product meets certain standards, it can be branded with the “Organic” certification mark. Your attorney will be able to clarify whether any of these exceptions or special classifications may apply to any branding devices you are seeking to trademark.


Trademark Registration Limitations

It is worth noting that trademarks are usually only protected to a certain extent for approximately 10 years. In addition, a company may be required by the USPTO to confirm that the trademark is still in active commercial use half-way into this ten-year timeframe. This timing restriction generally allows different words, graphics, etc. to be used publicly again after the trademark protection has lapsed.

Registering a trademark will not necessarily grant your company exclusive access to a certain word, logo, symbol or other branding device. In certain situations, a company or product in a non-related industry may be able to obtain an exception to exclusive trademark use. This is why Delta airlines and Delta faucets may co-exist. Although the USPTO usually grants relatively exclusive trademarks, each of these company names are protected despite the fact that they are both “Delta.” The USPTO sometimes allows companies, goods and services to have similar trademarks if each meets the standard that customers will be able to distinguish them from competitors in the marketplace. Both Delta airlines and Delta faucets are successful within their own industries. But because their goods/services are so different and their industries are distinct from each other, there is really no risk that customers will not be able to tell these companies apart when seeking to buy an airplane ticket or purchase a new faucet.

In essence, when a company is granted a trademark, that company then controls the interest in that specific branding tool and its association between the branding device and the company’s goods and services. It is partially for this reason that generic, deceptive, overly descriptive or geographically specific devices are hardest to brand. For example, when Craigslist tried to trademark a purple peace sign, their trademark registration request was rejected. Even when a company tries to make certain generic or universal symbols, etc. distinct, if they are not distinct enough to properly distinguish a company, goods or services within the marketplace (or when it would be unreasonable to grant a company a controlling interest in the use of a ubiquitous branding device, like a universally recognized and utilized symbol such as a peace sign), these trademark requests are likely to be rejected.

In addition, it is not permissible for the USPTO to trademark branding devices that are overtly vulgar or disparaging. Overtly “immoral” and “scandalous” branding devices are also barred from trademark protection. If you have any questions about these relative thresholds, please do not hesitate to ask your attorney for clarification. Proper names and likenesses are also barred from trademark protections unless the person in question has granted consent. For example, Paul Newman granted permission for his product-driven nonprofit organization to trademark both his name and his likeness for the company Newman’s Own and its logo featuring Paul Newman’s face. Government symbols, government insignia and the likeness of any U.S. president may also not be trademarked.

Finally, before you commit to any specific branding device, carefully consider whether it is likely to remain distinct over time and with significant usage. A trademark’s value is only a strong as its presence in the marketplace. If a trademark is used too often, it can become synonymous with its product and is no longer terribly useful in terms of brand distinction. For example, Kleenex is a product of the Kimberly-Clark Corporation. But the company’s trademarked name for its tissue product became so ubiquitous that it is now used to describe all facial tissue – often including those tissues manufactured by direct competitor Puffs. When a branding device becomes transformed in this way, it becomes increasingly difficult to enforce related intellectual property rights in court. Kimberly-Clark may have a trademarked name, but if the public no longer uses it to specifically distinguish Kleenex from other facial tissues, the effectiveness of the trademark has diminished to the point where competitors cannot reasonably be held liable for this turn of events. Trademarks can serve little purpose if they do not properly allow for distinction of companies and their products/services in the marketplace. Please consider speaking with your attorney about any steps you may need to take in order to ensure that your trademark functions as it is intended to.


Trademark Registration Next Steps

If your company would like to secure trademark protections for an eligible branding device, please consider connecting with an experienced intellectual property attorney as soon as you possibly can. The longer you wait to begin the trademark registration process, the longer your company and branding device will remain legally vulnerable. It is not unheard of for a successful trademark registration process to take up to a year, so enlisting the assistance of an experienced attorney will help to ensure that your trademark registration application is completed and processed as efficiently and effectively as possible. If you are planning on trademarking more than one branding device, your attorney will be able to clarify whether you will need to file separate applications for each device.

There are so many considerations to ponder when a company seeks to register a trademark that the process can seem overwhelming. Please connect with a member of the LawTrades intellectual property team today in order to obtain necessary guidance, assistance and support as you navigate this process. Scheduling a consultation with one of our experienced attorneys will allow you to begin your registration process promptly and in a low-stress, cost conscious way.