What Can and Cannot be Trademarked in US?

When you think of your favourite brands, iconic logos or slogans likely come to mind. These symbols are not just marketing tools but are also legally protected assets that offer companies significant advantages. Registering a trademark ensures legal protection and provides a unique visual identity that can deeply resonate with consumers. However, the journey to securing a trademark is paved with specific legal criteria determining what can and cannot be trademarked in the US. This guide highlights key considerations to help businesses apply for US Trademark Registration.

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Trademark

A trademark is a unique sign, symbol, design, word, or phrase that identifies and distinguishes the products or services of one business from those of others. It’s essentially a brand identifier that can include anything from company logos and product names to distinctive packaging or slogans. Trademarks are legal tools that help protect businesses’ brand identity and ensure consumers can clearly identify the source of goods or services, thereby preventing confusion in the marketplace. While a trademark is used for goods, a similar term, “service mark,” is used for services.

What is a Registered Trademark in the US?

A registered trademark is a trademark that has been officially approved and recorded by the US government, typically through the United States Patent and Trademark Office (USPTO). This registration provides the trademark owner exclusive rights to use the mark nationwide with the goods or services listed in the registration. It also offers legal advantages, such as bringing infringement cases in federal court and potentially obtaining higher damages for infringement.

The registered trademark designation is often indicated by the registered symbol ®. This status prevents others within the same industry from using a mark that is confusingly similar to yours and serves as a public declaration of your legal ownership and protection of the mark. As such, federal registration is considered the strongest form of trademark protection in the US, safeguarding the elements integral to your brand’s identity.

Why Getting a US Trademark Registration Is Important?

Understanding Trademark Distinctiveness and Eligibility

For a trademark to qualify for registration, it must be distinctive, meaning it should clearly identify and differentiate a business’s goods or services from others. Trademarks are categorized into five distinctiveness levels:

Generic Marks: These are common names for products or services and cannot be trademarked, such as “Bread” for a bakery’s bread.
Descriptive Marks: These directly describe the goods or services and can only be trademarked if they gain distinctiveness through market use, like “Sharp” for TVs.
Suggestive Marks: These imply characteristics of the goods or services and are trademarkable without needing to show acquired distinctiveness, like “Netflix” for streaming services.
Arbitrary Marks: Unrelated words used in a non-descriptive manner, like “Apple” for electronics, are readily trademarkable.
Fanciful Marks: Invented words with no prior meaning, like “Kodak,” are also easily trademarkable.

Functional and Prohibited Marks

Purely functional trademarks, such as a product’s essential shape or design, are not eligible for registration because they are necessary for the product’s use. Additionally, certain subjects are barred from trademark registration, including:

Common names, surnames, and personal pseudonyms without proven market distinctiveness.
Merely descriptive or laudatory titles, slogans, and phrases.
Marks that could mislead the public or are too similar to existing trademarks.

Key Steps and Considerations for Effective Trademark Registration

When considering US trademark registration, it’s vital to ensure your mark is unique and not likely to be confused with existing trademarks. A thorough trademark search is crucial before application. Generally, generic or overly descriptive terms and surnames face challenges in registration unless they’ve become closely associated with your brand. While previously, certain content was barred from trademarking, recent legal changes have expanded what may be considered for trademark registration.

Consulting with IndiaFilings can provide valuable insight into the eligibility of your mark and help navigate the complex trademark registration process, ensuring your brand’s identifiers are protected and distinguishable in the marketplace.

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What Can Be Trademarked in the US?

A wide variety of elements in the US can be trademarked, provided they distinctly identify and distinguish a brand’s goods or services. The fundamental requirement is that the mark is used in commerce and serves as a source identifier. The US Patent and Trademark Office (USPTO) is the federal agency responsible for the registration of trademarks. Here are some common types of trademarks:

Names: This can include your business name or product line name. To qualify for trademark protection, the name should be unique and non-generic.
Logos: Graphical designs or symbols representing your company or products can be trademarked. These include stylized word marks or standalone graphics.
Phrases and Slogans: Catchy slogans or phrases used in marketing or advertising that are associated with your brand can be protected.
Product Names: Specific names of products or services, like “MacBook” for Apple’s laptop line, can be trademarked to prevent others in your industry from using the same or a confusingly similar name.

Beyond these, trademarks can also extend to more unique identifiers, such as:

Colours: Specific colours used in a particular context can be trademarked if they serve to identify the source of goods or services, like Tiffany Blue for Tiffany & Co.
Sounds: Distinctive sounds that, when heard, are associated with a brand, such as the MGM lion’s roar.
Shapes: The unique shape of a product or its packaging can be trademarked, like the Coca-Cola bottle.
Characters: Distinctive characters like Geico’s Gecko are used in branding and advertising.

It’s crucial that whatever element you’re looking to trademark is used to identify your products or services to consumers and can be distinguished from competitors. The key to a strong trademark is its distinctiveness and its ability to signify the source of goods or services to the public.

What Cannot Be Trademarked?

While many things can be trademarked, there are specific categories and types of marks that the US Patent and Trademark Office (USPTO) generally does not allow for trademark registration. These include:

Generic Terms: Words commonly used to describe a type of product or service, such as “Bicycle” for bikes, cannot be trademarked because they need to be available for everyone in that industry.
Descriptive Terms: If a term directly describes a characteristic or quality of the product or service, like “Cold and Creamy” for ice cream, it generally cannot be trademarked unless it has acquired a secondary meaning that identifies it with a particular source.
Geographical Terms: Names of places or areas known for a particular product or service cannot be trademarked if the mark merely describes where the goods or services come from, such as “New York Pizza.
Common Surnames: Last names cannot be trademarked unless they have gained recognition as a brand through extensive use in commerce, indicating a particular source of goods or services.
Certain Symbols and Government Insignias: Official seals, flags, and other insignias of the United States or any state, municipality, or foreign nation cannot be trademarked.
Deceptively Misdescriptive Marks: If a mark falsely describes a product or service, suggesting an attribute or quality it does not have, it cannot be trademarked.
Merely Functional Features: Features of a product that are essential to its use or purpose, and affect its cost or quality, cannot be trademarked because they need to be free for all to use.
Identical or Confusingly Similar Marks: You cannot trademark a name, logo, or other marks that are too similar to an existing trademark, as it could cause confusion among consumers.
Misleading or Deceptive Marks: Marks that could deceive or mislead consumers about the nature, quality, or geographic origin of goods or services are not eligible for trademark protection.
Names of Living Individuals: Using someone’s name, portrait, or signature without their consent is not allowed for trademark registration.

Understanding what cannot be trademarked is as important as knowing what can be, ensuring that the trademark you seek to register is eligible and does not infringe on the existing rights of others.

Conclusion

In summary, understanding what can and cannot be trademarked in the U.S. is crucial for businesses looking to protect their brand identity. Trademarks can include a wide range of identifiers such as names, logos, phrases, and even unique sounds or colours, as long as they distinctly signify the source of goods or services to consumers. Registering a trademark with the U.S. Patent and Trademark Office (USPTO) offers significant legal advantages, including nationwide protection and exclusive rights to use the mark in connection with listed goods or services.

IndiaFilings offers specialized assistance for US trademark registration, ensuring a smooth process from application to approval with our expert guidance.

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